On May 9, 2022, the amendment to the Industrial Property Law, which introduces the action for revocation of trademark registration due to non-use. By means of this action, an interested party may request the declaration of revocation of a registration in two hypotheses:
a) No real and effective use of the trademark within the national territory within the first 5 years from the granting of the registration.; o,
b) Real and effective use within the national territory suspended uninterruptedly for 5 years, even after the first hypothesis.
In the case of unused trademarks, the computation of the 5 years will depend on:
- Trademarks registered with prior to the new law: It will be counted from your last renewal after May 9, 2022.
- Trademarks registered with after the new law: It shall be subject to the term of5 years from its concession or suspension of use.
Therefore, we expect that the first related litigation will take place within 5 years from the effective date of the law.
The action for a declaration of forfeiture may be brought either by itself or in response to a nullity or opposition claim that is based on a prior registration. Therefore, there will be strong incentives to challenge the revocation of a trademark as a defense to an opposition claim.
Undoubtedly, this new action will provide greater tools for registering trademarks. But, as a consequence, the owners of trademarks in force and without use will have to review their defense strategies.
If you have any questions, please do not hesitate to request a meeting with our team to discuss the details: sdiaz@diazdonoso.cl / adonoso@diazdonoso.cl / fnawrath@diazdonoso.cl
