● Experts offer recommendations to prevent trademark infringement and explain how to act if it occurs.

In Chile, the misuse of registered trademarks has gained increasing relevance, affecting entrepreneurs and companies across various sectors. Despite the legal protections available, many people are unaware of how to respond to an infringement of their registered trademark—or even that they have the possibility to register it in the first place.

Manuel Araya, an associate attorney at Apparcel Uriarte Abogados, explains that in cases of improper use of a registered trademark, it is essential to have a lawyer specialized in industrial property, who will guide the affected individuals or companies through the corresponding legal process. He points out that it is difficult to speak of “trademark theft” as such when referring to a registered trademark, since it is an intangible asset registered with the National Institute of Industrial Property (INAPI) and not a tangible item. In this case, the appropriate term is generally trademark infringement.

He notes that there are two common scenarios in which a registered trademark can be affected: the unauthorized use of a registered trademark by a third party, meaning the use of an already registered commercial mark without permission, to offer identical or related goods or services. If your trademark is registered and someone else is using it without authorization, this may even constitute a crime, and you can request the imposition of fines, the cessation of its use, compensation for damages, and the destruction of the goods or products being marketed.

Another possibility is when a third party with no connection registers an unregistered (extra-registral) trademark. This means that if a third party applies to register a trademark before its original creator does, it is possible to oppose the registration before INAPI by demonstrating prior use of the mark. If the trademark has already been registered by the third party, there is a five-year period to request the nullity of the registration if the holder acted in good faith; and the action is not subject to a statute of limitations if the registration was obtained in bad faith.

“If two people use a trademark simultaneously and neither has it registered, there is no crime. It’s virtually impossible for both users of the same mark for related products or services to register it, since INAPI examines trademark applications, and Industrial Property Law does not allow the registration of identical or very similar trademarks for identical or related goods or services. The objective of the law is, on one hand, to protect the holder of the registered trademark, but also to protect the public from errors or confusion,” the lawyer explains.

Unauthorized use of a registered trademark may constitute a crime, and sanctions include fines ranging from 25 to 1,000 UTM (Monthly Tax Units), and imprisonment from the lowest to the medium degree. In addition, the affected party may request the cessation of the use of the trademark and the destruction of the associated goods, as established in Industrial Property Law 19.039.

“Registering a trademark grants its holder the exclusive right to use it, along with the right to prevent third parties from using the mark for identical or related goods or services. As an example, there currently exists a university, a clinic, a match company, and a compensation fund all called ‘Los Andes,’ and they coexist without major issues because their products or services are not related.”

Recommendations for Trademark Protection in Chile

● Register the trademark: The best way to protect a trademark is to ensure that it is properly registered with INAPI. This registration grants exclusive rights over the use of the trademark in Chile for 10-year periods, renewable indefinitely.

● Ongoing monitoring: It’s important to regularly monitor the registered trademark to detect possible unauthorized use and act quickly if any infringements are identified.

● Specialized legal advice: If you suspect that your registered trademark is being used improperly, or that a third party has registered a mark you haven’t registered yet, it is advisable to consult a lawyer specialized in industrial property who can guide you through the legal actions to take.