Chile: non-use trademark cancellation

Chile: non-use trademark cancellation

By Magdalena Sáenz Lavalle.

The Chilean Industrial Property Law has been recently modified due to the publication of Law 21,355. One of the most significant changes is the inclusion of the partial or total trademark cancellation action due to lack of use or genericide (generic trademark).

According to this change, all trademarks registered in Latin American countries must be used; otherwise, they may be cancelled. The period in which the trademark has to be used within each territory is two years in Venezuela; three years in Bolivia, Colombia, Cuba, Ecuador, Honduras, Mexico, Nicaragua, Peru, and the Dominican Republic; and five years for Argentina, Brazil, Chile, Costa Rica, El Salvador, Guatemala, Panama, Paraguay, Puerto Rico, and Uruguay.

To avoid the consequences of a non-use cancellation request, the trademark owner must demonstrate its use, either by themselves or by their licensee. For the Andean Community of Nations, it is sufficient to prove the use in any of the four-member countries (Bolivia, Colombia, Ecuador and Peru), i.e., not necessarily in the country where the owner has registered the trademark whose cancellation has been requested. In Paraguay, it is sufficient to prove the use in any country in the world. The rest of the countries require evidence of use in the country of registration.

A non-use trademark cancellation is leaning towards remedying the non-use of the brand in the market, allowing the entry of other trademark owners to the system. The so-called “defense trademarks” are no longer admitted. In all the aforementioned jurisdictions, proof of use rests with the owner of the registration.

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