We invite you to read the publication prepared by our IP, Tech and Data Group on the expiration of trademarks for lack of use after three years of the Short Law.
This modification responds to a worldwide trend, implemented years ago in several jurisdictions where it is required that those who register a trademark actually use it for the products and/or services in question.
Currently, three years have passed since the implementation of the amendments brought about by the Short Law of INAPI (No. 21.355), a crucial reform in the Industrial Property Law, which came into force on May 9, 2022. This law introduced a fundamental new action: the forfeiture for lack of use. This action allows any person with a legitimate interest to request the total or partial lapse of a trademark registration, provided that after five years from the date of granting the registration, the trademark has not been subject to prior use within the national territory, either by its owner or through a third party with the respective authorization.
This modification responds to a worldwide trend, implemented years ago in several jurisdictions where it is required that those who register a trademark actually use the products and/or services in question.
In Chile, prior to the implementation of the changes of the Short Law, there was no similar obligation, which meant that any person could register a trademark and renew it indefinitely without the need to use it. This ultimately meant that multiple trademarks were not used in the market, but finally the owner kept them in order to exercise his exclusivity rights so that they could not be registered by another person or company. This phenomenon generated a form of monopoly over certain distinctive signs, which could be renewed indefinitely, without any obligation to use them effectively in the national market.
Therefore, the Short Law modified this panorama by introducing in 2022 the possibility for a trademark registration to expire for lack of use, which mainly seeks to ensure that registered trademarks are used, otherwise the trademark may be subject to cancellation, thus avoiding monopolies on a certain expression. Following this line, it is important to recapitulate how this action works, since it is very important that we make the following distinction:
- Trademarks registered after May 9, 2022: The revocation action may be filed after 5 years from the registration date. As an example, a trademark that was accepted for registration in 2023, the action may not be filed until 2028.
- Trademarks registered prior to May 9, 2022: The revocation action may be filed after 5 years from the first renewal of such registered trademark, which occurred after May 9, 2022. For example, a trademark that was accepted for registration in 2020 will be valid for 10 years until 2030, and then, if it is renewed on that date, the 5 years will be counted from the renewal date, which will be in 2030. Thus, the forfeiture action will only be deducted in 2035.
Thus, the period will vary widely depending on the date on which the trademark was registered before or after May 9, 2022.
Therefore, to date no forfeiture lawsuits have been filed, as there are no trademarks yet that fall within the term ranges, and the first forfeiture actions may only be filed around 2027 when trademarks registered after the entry into force of the Short Act begin to meet the term requirements to be challenged.
Currently, many individuals and companies have been more cautious when applying for trademark registration. Now, when registering a trademark, they make sure that they will actually use it in the market for the products and/or services applied for, in order to prevent the trademark from being subject to revocation due to lack of use.
Therefore, it is essential to take into account these considerations not only when applying for the registration of a trademark, but also if you are interested in exercising this action in the future.
In short, the revocation action for non-use not only modernizes our trademark system, but also forces owners to evaluate their registration strategies. It is no longer enough to register trademarks in order to reserve them indefinitely for new projects that may arise in the company, since it will be necessary to prove effective use. Therefore, today more than ever, it is key to align registrations with the commercial reality and project from now on how to defend their own assets, or even, evaluate strategies for challenging third party trademarks in the face of this new scenario.
