Descriptiveness and Acquired Distinctiveness in Chile: Article 20(e) Explained

Chile’s trade mark law, like most modern systems, prevents the registration of marks that merely describe the goods or services they cover. Under Article 20(e) of Law No. 19,039 (the Industrial Property Law, as amended by Law No. 21,355), a sign that lacks distinctiveness because it describes the type, nature, origin, nationality, destination, weight, value, or quality of the relevant goods or services — or that constitutes the common designation for those goods or services in trade — cannot be registered as a trade mark. However, Chilean law also recognises that a descriptive sign can earn its place on the register if it has acquired distinctiveness through use. Understanding the boundary between a fatal generic refusal and a curable descriptive refusal is essential for applicants choosing marks for the Chilean market.

The Legal Framework: Article 20(e) of Law No. 19,039

Article 20 of Chile’s Industrial Property Law sets out 11 grounds for refusal, lettered (a) through (k). The provision most directly relevant to descriptive marks is Article 20(e), which prohibits the registration of signs that lack distinctiveness — that is, signs whose elements cannot serve to distinguish the goods or services of one enterprise from those of another.

In practice, INAPI (the National Institute of Industrial Property) applies this provision to refuse marks that are:

• Generic terms: Words that are the common name for the product or service itself. For example, “SILLA” (chair) for chairs, or “COMPUTADOR” (computer) for computing devices. These represent the most extreme form of non-distinctiveness and are virtually impossible to register.
• Descriptive marks: Words that describe a characteristic, quality, or attribute of the goods or services without being the product’s common name. For example, “DULCE” (sweet) for chocolate, or “RÁPIDO” (fast) for courier services.
• Common trade designations: Terms that, through widespread use in a particular industry, have become the standard way to refer to a type of product or service, even if they were not originally generic.

INAPI examines every application for compliance with Article 20(e) during its substantive review. If the examiner determines the mark lacks distinctiveness, a substantive observation (official action) is issued, provisionally refusing registration.

Generic vs. Descriptive: A Critical Distinction

The distinction between generic and descriptive terms carries significant practical consequences in Chile:

• Generic terms name the product or service itself. They are considered inherently incapable of functioning as trade marks and cannot be registered under any circumstances. No amount of use or consumer recognition can rescue a generic term, because granting exclusive rights over it would deprive all other traders of the ability to name their products.
• Descriptive marks describe a quality, characteristic, or attribute of the product but are not the product’s name. While these are refused under Article 20(e) in the first instance, they can potentially be saved if the applicant demonstrates that the mark has acquired distinctiveness (secondary meaning) through extensive use in the Chilean market.

This distinction is not always obvious. INAPI assesses it from the perspective of the average Chilean consumer, taking into account both Spanish-language understanding and any commonly understood foreign-language terms. An English word that functions as descriptive in Chile — such as “FRESH” for food products or “CLEAN” for cleaning supplies — may be refused even though it is a foreign term.

Acquired Distinctiveness: The Exception

Chilean law recognises that a sign originally lacking distinctiveness can become registrable if it has acquired distinctiveness through use — a concept also known internationally as “secondary meaning.” This means the consuming public in Chile has come to associate the descriptive term with a specific commercial source, rather than treating it as a mere description of the goods.

To prove acquired distinctiveness before INAPI, the applicant must provide robust evidence demonstrating that the mark has been used extensively in Chile and is now recognised by consumers as a brand. Relevant evidence includes:

• Duration and continuity of use in Chile: How long and how consistently the mark has been used in the Chilean market.
• Sales volumes and revenue: Figures demonstrating significant commercial activity under the mark in Chile.
• Advertising and promotional expenditure: Investment in marketing directed at Chilean consumers, with samples of actual advertising materials.
• Consumer surveys: Recognition studies conducted in Chile showing that the public perceives the descriptive sign as a trade mark.
• Media coverage: Press articles, reviews, or editorial mentions in Chilean publications.
• Market share and distribution: Data showing the mark’s position and geographical reach within the Chilean market.

The evidence must relate to use in Chile specifically. International sales data or advertising campaigns not directed at the Chilean market carry little weight with INAPI. The assessment is made from the perspective of the relevant Chilean consuming public.

How INAPI Evaluates Distinctiveness

INAPI has developed consistent examination criteria for distinctiveness assessments. The examiner considers the mark as a whole, in the context of the goods or services specified in the application. A word that is descriptive for one category of goods may be perfectly distinctive for another — “APPLE” is generic for fruit but arbitrary for electronics.

For composite marks (word plus design elements), INAPI may accept the mark overall if the design component provides sufficient distinctiveness, even where the word element standing alone would be descriptive. However, the protection will effectively be limited to the distinctive elements of the combination, and INAPI’s practice recognises that the descriptive word component remains free for all traders to use.

INAPI’s examination also considers expressions in indigenous languages. Under guidelines issued in 2023, when an expression in a native language describes the product or service, it will be treated as generic or descriptive under Article 20(e), consistent with the general approach to descriptive terms in Spanish.

The Procedure for Responding to a Descriptiveness Refusal

When INAPI issues a substantive observation citing Article 20(e), the applicant receives notification and has an opportunity to respond with arguments and evidence. The response should:

• Argue that the mark is not in fact descriptive (e.g., it is suggestive rather than directly descriptive), with supporting reasoning.
• Alternatively, submit evidence of acquired distinctiveness if the mark is concededly descriptive but has gained recognition as a brand through use.
• Consider whether the mark can be amended — for example, by adding a distinctive design element — to overcome the objection while preserving the descriptive word as a component.

If INAPI upholds the refusal, the applicant may appeal to the Industrial Property Court (Tribunal de Propiedad Industrial), which serves as the second-instance tribunal for trade mark disputes. Decisions of the Industrial Property Court may, in certain circumstances, be further appealed to the Supreme Court.

Strategic Recommendations

• Choose inherently distinctive marks: The most reliable strategy is to avoid descriptive marks entirely. Invented words, arbitrary terms, and suggestive marks face no descriptiveness objection and provide the broadest scope of protection.
• Consider composite marks: If a descriptive element is commercially important to the brand, combine it with a distinctive word, logo, or design. The descriptive element may receive limited protection, but the mark can register based on the distinctive components.
• Build evidence before filing: If you plan to file a descriptive mark, begin accumulating evidence of use and consumer recognition in Chile before submitting the application. This strengthens any acquired distinctiveness argument.
• Account for Spanish and local understanding: Test your mark not only in its original language but also in Spanish. A mark that sounds arbitrary in English may be descriptive or carry unintended meanings in Spanish. Also consider indigenous language implications under INAPI’s 2023 guidelines.
• Distinguish generic from descriptive: Before investing in an acquired distinctiveness strategy, confirm that your mark is descriptive rather than generic. If the term is the common name for the product, no amount of evidence will save it.

Common Mistakes

• Assuming foreign-language terms are safe: If Chilean consumers understand the foreign word as descriptive, INAPI will refuse it under Article 20(e).
• Confusing generic and descriptive refusals: Generic terms cannot be rescued through acquired distinctiveness. Descriptive terms can. The response strategy depends entirely on this classification.
• Submitting only international evidence: Acquired distinctiveness must be proven in the Chilean market. Global sales data or advertising campaigns not directed at Chile will not satisfy INAPI.
• Combining two descriptive elements and expecting registration: A combination of descriptive terms typically remains descriptive unless the combination creates a new, non-obvious meaning that consumers would not immediately understand as describing the goods.
• Relying on stylisation alone: Adding a font or colour to a descriptive word does not overcome the Article 20(e) objection if the word element is the dominant component of the mark.

Key Takeaway

Chile’s approach to descriptive marks follows international consensus: terms that merely describe goods or services must remain free for all traders to use. Article 20(e) draws a firm line against non-distinctive signs, but the law provides a path through acquired distinctiveness for marks that have genuinely earned consumer recognition in the Chilean market. The critical first step is understanding whether a mark is generic (fatal) or descriptive (curable) — a distinction that determines the entire strategy. For most applicants, the most cost-effective approach is to invest in inherently distinctive marks that avoid the issue entirely.