It is extremely important that, when we know that a third party is using a trademark that is identical or substantially similar to the one we have registered, we act quickly and with specialized professional advice.
When a company or individual discovers that a third party has begun to use a trademark that is identical or practically identical to theirs, but without having applied for registration with the National Institute of Industrial Property, they often face a feeling of uncertainty about how to act or how to proceed, Since they cannot file an opposition claim against the unauthorized use of a trademark that is identical or similar to theirs, they are often unaware of the legal mechanisms available to them as the owner of a registered trademark.
As we know, Law No. 19,039 on Industrial Property establishes in Article 19 bis D that, first and foremost, a trademark confers on its owner the exclusive right to use it in economic transactions. It adds in its second paragraph that: “Consequently, the owner of a registered trademark may prevent any third party, without their consent, from using identical or similar trademarks in the course of commercial operations for products or services that are identical or similar to those for which the registration has been granted, provided that the use made by the third party could lead to error or confusion.”
As mentioned in the article, the owner of a registered trademark may prevent a third party from using an identical or similar trademark for the same products or services without their consent. Therefore, the absence of an application to INAPI by a third party does not imply that the owner of the registered trademark is unprotected. As mentioned, in principle, it is not possible to file an opposition, as this tool only applies to applications filed with INAPI.
In this scenario, the first recommended step is not necessarily legal action, but rather warning the other party that they are committing an infringement. Before resorting to the courts, it is useful and strategically reasonable to send a formal warning letter. This document, issued by the affected owner or their legal representative, serves to inform the infringer that the sign used is identical or similar to a trademark registered and used in the market, and therefore requests the immediate cessation of the improper use. It is important to mention that the warning letter itself has no legal effect. Notwithstanding the above, depending on the infringer’s reaction, it could resolve the problem of unauthorized use more quickly and economically. If the infringer persists in maintaining the infringements, it can serve as good evidence for the civil judge in the event of an infringement lawsuit, proving that the eventual defendant was aware that their actions did indeed constitute an infringement.
In many cases, this is sufficient to end the conflict, avoiding the costs of legal proceedings. However, when the warning letter does not produce the desired effect or the infringer persists in their conduct, there are various legal actions that can be taken. The Industrial Property Law provides for civil actions aimed at obtaining the cessation of unauthorized use of a trademark, compensation for damages caused, and the adoption of necessary measures to prevent the infringement from continuing. These actions, regulated in Articles 106 et seq. of the law, are designed primarily to stop the infringer from continuing their actions and even to obtain compensation for damages if there is sufficient evidence to prove them.
On the other hand, it is also possible to bring criminal proceedings against the infringer, including in situations where a third party maliciously uses a trademark that is identical or similar to another that is already registered for the same products or services, or where a third party counterfeits a trademark already registered for the same products or services. The use or counterfeiting of a registered trademark for commercial purposes may be punishable by a fine and even imprisonment.
Another relevant alternative, which can be added to a civil action for trademark infringement, is the action for unfair competition regulated by Law No. 20,169. This law punishes any conduct that, by illegitimate means, seeks to divert customers from a competitor or take advantage of its reputation. The use of a trademark that is identical or similar to another that is already established in the market may constitute precisely such a case, as it creates confusion about the commercial origin of the products or services. In such a case, a civil action may be filed with the aim of requesting the cessation of the conduct, in addition to compensation for damages.
In this regard, it is essential to note that civil actions are primarily aimed at obtaining the cessation of the infringing act and, additionally, compensation for damages when it is possible to prove the existence of damage actually caused by the misuse of the trademark. For its part, criminal action seeks to punish the offender by imposing a penalty, depending on the seriousness of the offense.
In conclusion, it is extremely important that, when we know that a third party is using a trademark that is identical or substantially similar to the one we have registered, we act quickly and with specialized professional advice.
It is advisable to start with a warning letter, in order to inform the infringer of the existence of the trademark right and thus avoid having to take legal action, which usually requires more time and resources. It is also essential to register the trademark, as this is the mechanism that grants the exclusive and exclusive right to use a particular name in the market.
Ultimately, each case must be analyzed individually, determining at that time which is the most appropriate course of action for the owner: whether to start with a letter or to take civil or criminal action, depending on their interests and the seriousness of the infringement.
For more information on these topics, please contact our Intellectual and Industrial Property Group:
Eugenio Gormáz | Partner | egormaz@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
Matías Selamé | Associate | matiasselame@az.cl
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