News

Non-use cancellation action in Chile

During the year 2013 will be presented a bill which is intended to include for the first time in Chilean trademark legislation, the figure of trademark cancellation action based on non-use.
At present, Chile is one of the few Latin American countries where it is not possible to request a trademark cancellation action, based on non-use.

This topic has been the subject of intense debates. Some detractors of the obligation to use a trademark argue that Chilean law, especially the Constitution, provides for a fairly high level of protection with regard to property rights and trademark rights, being not possible for the legislature to establish conditions of use, which is a self faculty of the sphere of the owner.

According to this argument, the inclusion of this action implies the need for a constitutional reform.

Others, on the other hand, believe that the cancellation action could discourage foreign investment and brand protection for fear of cancellation.

But despite these arguments, finally there has been a consensus on the importance of this figure, which is closely linked to the function of the trademark as a vehicle designed to identify products and services in the market.

A trademark that is not used does not fulfill its function and may end up being a mere paper, aimed at hampering healthy market competition.

The absence of the non-use cancellation action in Chile has allowed the existence of a trademarks rights bordering on the perpetual, being clear that some companies register trademarks with defensive purposes, that is, registering under different classes a trademark that only is being used for a specific class; or the registration of similar or alternatives trademarks that will not be used, to avoid dilution of marks that are in use.

It only remains to wait that the next bill to be submitted complies with all legislative stages and eventually becomes a reality, it will allow Chile to adhere to the prevailing rule, not only in Latin America but worldwide, regarding the requirement of mandatory use of the trademarks.

Carmen Sánchez-Puelles