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Cancellation action for well-known trademarks obtained in bad faith: Dockers case studies

Recently, the Chilean Supreme Court has issued a decision stating that a cancellation action for well-known trademarks obtained in bad faith is imprescriptible according to the provisions included in the Paris Convention, which is an international treaty that must be applied directly since the date that Chile became a member state. It means that the application in Chile of the Paris Convention does not depend on the issuance of a decree or national regulation: direct application of the convention.
This is a relevant decision in Chile, where it has been a controversial issue, deeply discussed by all IP judicial instances: Chilean PTO, Industrial Property Court and the Supreme Court.

As to the case itself, the company Levi Strauss & Co., filed a remedy before the Chilean Supreme Court against the decision issued by the Industrial Property court, which rejected the cancellation action of trademark DOCKERSSUN, based on the fact that this action had expired according to the statute of limitations regulated by the Chilean IP law.

According to the Chilean IP law, the statute of limitations for a cancellation action of a trademark registration is of five years as from the date of registration. However, the Supreme Court has revoked said decision stating that according to the Paris Convention no statute of limitations is applicable regarding well-known registrations obtained in bad faith.

In effect, the Articule 6 N° 3 of the Paris Convention regulates that regarding well-known or famous trademarks, there is not deadline or limit for requesting the cancellation or prohibition of use of trademarks obtained in bath faith.

To sum up, the Chilean Supreme Court has recognized through this decision, the special protection in Chile of well-known trademarks, according to the Paris Convention’s provisions, whose applicability must be directed and prevalent.

Carmen Sánchez-Puelles