Even if a trademark is registered, there is a risk that third parties may apply for similar signs for the same products or services.
Registering a trademark in Chile is a fundamental step in protecting a company’s intangible assets. Under the Industrial Property Law, the owner of a registered trademark acquires an exclusive right to use it in economic transactions, under the terms in which it has been granted, and to distinguish the products or services covered by that registration.
Therefore, once the registration has been obtained, the owner acquires the exclusive right to use the trademark, which allows them to oppose its use by third parties without their authorization.
This right implies the power of the trademark owner to prevent any person, without the respective authorization to do so, from using an identical or similar trademark to distinguish the same products or services, which may cause confusion among consumers.
However, one of the most common mistakes made by many individuals and legal entities is to assume that once the trademark is registered, all “obligations” related to trademark protection are fulfilled, which is completely untrue.
As we know, once the trademark is registered, the registration process with the National Institute of Industrial Property (INAPI) is effectively complete. However, from that moment on, an extremely important stage begins: trademark monitoring.
Why is this important?
Even when the trademark is registered, there is still a risk that third parties will file new applications to register identical or similar signs to distinguish the same products or services.
If such applications are accepted by the trademark authority without opposition, this can have various consequences, such as the possibility of confusion or error among consumers, loss of the distinctive character of the registered trademark, or various types of legal conflicts. Therefore, to prevent this from happening, it is essential to have a trademark monitoring system in place.
Trademark monitoring consists of periodically monitoring new applications filed with INAPI to detect possible conflicts with previously registered trademarks, which allows the owner of the registration to have time to evaluate the preparation and filing of an opposition within the corresponding legal deadline, provided that there are sufficient similarities between the trademarks in conflict.
At this point, it is essential to mention that, notwithstanding the fact that the National Institute of Industrial Property may observe that a trademark application bears graphic or phonetic similarities and overlaps with a previously registered trademark, there is a possibility that such an observation will not be made for various reasons.
In such cases, it is essential to file an opposition claim on behalf of the owner of the trademark registration that is affected. In this regard, the law expressly grants the possibility of opposing such registration, where we have a period of 30 business days to file the claim with INAPI.
Along these lines, it is important to note that even if INAPI has thoroughly reviewed the trademark application, it is still highly recommended to file an opposition claim. This is because, when filed, a formal contentious proceeding is opened, in which the parties can present their arguments and submit evidence to support their position, which allows for a better defense of the rights granted through the registrations.
Therefore, it is extremely important to have trademark monitoring in place to notify when an identical or similar trademark has been filed for the same coverage as the previously registered trademark.
What to do when it has not been filed with INAPI?
That said, it is important to mention that surveillance may focus on applications filed with INAPI, but ideally it should not be limited to this alone. In practice, there are many cases where an identical or similar trademark is used for the same products and services that has not been applied for with the trademark authority (INAPI), but is used directly in commercial traffic.
In such cases, we do not have the possibility of filing an opposition claim since we are not dealing with an application filed with the institute. In this regard, and depending on the case, an out-of-court approach may be considered in order to require the cessation of the improper use, or outright legal action may be taken for trademark infringement, unfair competition, or other applicable legal actions.
That is why we should not focus our monitoring exclusively on applications filed with INAPI, but rather it is advisable to periodically review social media and websites in order to detect possible unauthorized uses of identical or confusingly similar trademarks, especially in relation to products or services that are covered by our registrations.
In conclusion, it is extremely important to have effective monitoring in place to fully protect the registered trademark.
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
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