TRADEMARK USE REQUIRED IN THE INDUSTRIAL PROPERTY BILL

15 / 11 / 2014

Chile is one of the few countries that do not require the trademark use to maintain a registration.

The requirement for mandatory use of a mark is in line with international standards, and what it seeks to is benefit their holders, preventing abuse from companies which register trademarks that will not be actually used, only with the purpose of preventing free competition and investment in our country.

The new Industrial Property bill currently under discussion in the Congress, provides for the institution of the Revocation of the Trademark that would operate if after 5 years from the date of grant of the registration, the mark had not been put to actual use within the national territory by its holder or with its consent; or whether such use had been suspended continuously for the same period, this without prejudice there are valid reasons to justify the lack of use arising independently from the trademark owner’s will which constitute an obstacle to said use, such as import restrictions and other official requirements imposed on the goods or services protected by the mark.

However, the bill does not establish when to prove it nor provides a legal deadline for requesting it, or regulate who will require the use.

We believe that upon renewing a trademark registration, the Chilean Trademarks Office should be the one to verify the use made by the holder and thus the revocation trademark operates ipso iure, on the contrary, if a controversial judgment by interested party is requested to declare it, we should understand that we are confronted to a cancellation action and not a revocation one.

For more information please contact Bernardo Serrano (bserrano@villaseca.cl) or Claudia Varas (cvaras@villaseca.cl).