Likelihood of Confusion and Oppositions at INAPI: Article 20(h) Explained

Likelihood of confusion is the most common ground for refusal of trade mark applications in Chile. Under Article 20(h) of Law No. 19,039, INAPI cannot register signs that are identical to, or that graphically or phonetically resemble in a confusing manner, other trade marks that are already registered or have been validly applied for earlier in the same class, or that have been effectively used in Chile prior to the application date. Understanding how INAPI assesses confusing similarity — and how the opposition system operates — is essential for both applicants seeking to clear their marks and third parties seeking to protect existing rights.

The Legal Basis: Article 20(h)

Article 20(h) is a relative ground for refusal — it depends on the existence of a prior right. The provision prohibits the registration of signs that are identical or confusingly similar to:

• Trade marks that are already registered in the same class of goods or services.
• Trade marks that have been validly applied for earlier (pending applications with an earlier filing date) in the same class.
• Signs that have been effectively used in Chile prior to the application date, even if unregistered.

INAPI conducts its own ex officio search of the register during the substantive examination phase and will issue a substantive observation (official action) citing any marks it considers to be in conflict. Additionally, third parties may file oppositions raising Article 20(h) as a ground.

The Three Dimensions of Similarity

INAPI assesses confusing similarity by comparing the competing marks across three established dimensions:

Graphic (Visual) Similarity

This examines the visual appearance of the marks, including the spelling, arrangement of letters, overall structure, and — for figurative or mixed marks — the design elements, colours, and visual composition. For word marks, INAPI pays particular attention to shared letter sequences, especially at the beginning of the mark, the overall length, and the structural similarity of the words.

For composite marks (word plus design), both the word element and the figurative element are assessed. The word element is typically considered more dominant for comparison purposes, as it is the element consumers use to verbally identify and request products.

Phonetic Similarity

This examines how the marks sound when spoken aloud. In Chile’s predominantly Spanish-speaking market, phonetic similarity carries significant weight. INAPI considers the pronunciation of the marks in Spanish, the number of syllables, the rhythm and cadence, the dominant vowel and consonant sounds, and whether shared sounds appear in stressed positions.

Spanish pronunciation rules are applied consistently. Foreign-language marks are assessed based on how the average Chilean consumer would pronounce them, which may differ significantly from the pronunciation in the original language.

Conceptual (Ideological) Similarity

This examines whether the marks convey the same or a similar idea or meaning. Two marks that are visually and phonetically different may still be found confusingly similar if they evoke the same concept. For example, a word mark “LEÓN” and a figurative mark depicting a lion could be conceptually identical.

Conceptual similarity also captures translations. A mark in Spanish that means the same thing as an existing mark in English (or vice versa) may be refused on this ground, provided the relevant Chilean consumer would understand both terms.

The Opposition System

Chile operates a pre-registration opposition system. Once a trade mark application passes the formal examination, INAPI orders its publication in the Official Gazette (Diario Oficial). From the date of publication, any interested third party has a strict period of 30 working days to file an opposition.

Key features of the opposition procedure include:

• Standing: Any person whose rights may be affected by the registration can file an opposition. The opponent does not necessarily need to hold a prior Chilean registration — oppositions may be based on unregistered rights, well-known marks, or absolute grounds such as descriptiveness.
• Legal representation: Since an opposition is a legal proceeding, both the opponent and the applicant (if contesting the opposition) must be represented by a practising Chilean lawyer.
• Response period: Once the opposition is served on the applicant, the applicant has 30 working days to file a response contesting the opposition. There is no obligation to respond — INAPI will consider the arguments of both parties (or only the opponent, if the applicant does not respond) before issuing its decision.
• Evidence period: A probationary term of 30 working days is opened for both parties to submit evidence. This period may be extended once for an additional 30 working days in justified cases.
• No official fees: There are no government fees for filing an opposition in Chile.
• Decision: INAPI’s Director issues a resolution granting or refusing the application. The timeline from opposition to decision typically ranges from one to six months, depending on the complexity of the case and the volume of evidence.

INAPI’s Coexistence Agreements

Chilean law recognises the possibility of coexistence agreements between the applicant and the owner of a prior mark. INAPI may accept such agreements, provided they do not affect the prior rights of third parties or cause consumer confusion. A well-drafted coexistence agreement can overcome an Article 20(h) objection, but INAPI retains discretion to refuse if it concludes that confusion would still occur despite the parties’ agreement.

Appeals

Both the applicant and the opponent may appeal INAPI’s decision to the Industrial Property Court (Tribunal de Propiedad Industrial), which serves as the second-instance tribunal. The Industrial Property Court conducts a full review of the evidence and legal arguments. In certain circumstances, decisions of the Industrial Property Court may be further appealed to the Supreme Court of Chile.

Strategic Recommendations

• Conduct a thorough pre-filing search: Before filing an application, search INAPI’s publicly available database for identical and similar marks in the relevant classes. This allows you to assess risks and adjust strategy before committing to an application.
• Monitor the Official Gazette: If you own existing marks in Chile, establish a monitoring system to detect potentially conflicting applications within the 30-working-day opposition window. Missing the window means losing the most cost-effective opportunity to challenge.
• Consider coexistence early: If a conflict is identified, approaching the prior mark owner before or during the opposition period can save time and expense. A coexistence agreement eliminates the uncertainty of contested proceedings.
• Differentiate your mark: If your chosen mark is similar to an existing registration, consider visual or conceptual differentiation — adding distinctive design elements or narrowing the goods specification — to strengthen the case that confusion is unlikely.
• Prepare for legal representation: Foreign applicants should be aware that Chilean oppositions require legal representation by a licensed local attorney. Engaging counsel early ensures timely responses to any opposition.

Common Mistakes

• Ignoring phonetic similarity in Spanish: Marks that appear visually distinct may sound very similar when pronounced in Spanish. Always test pronunciation.
• Missing the 30-working-day opposition window: The deadline is strict and counted in working days from the Official Gazette publication date. There is no extension or grace period.
• Assuming visual differences are sufficient: INAPI applies a global assessment across all three dimensions. Strong phonetic or conceptual similarity can outweigh visual differences.
• Failing to appoint a Chilean lawyer promptly: Oppositions require legal representation. Foreign applicants who do not have local counsel in place risk missing response deadlines.
• Overlooking unregistered prior rights: Article 20(h) also protects marks that have been effectively used in Chile prior to the application date, even without registration. A prior user can successfully oppose a new application.

Key Takeaway

Likelihood of confusion under Article 20(h) is the central battleground of Chilean trade mark prosecution. INAPI evaluates graphic, phonetic, and conceptual similarity using a comprehensive approach, and the opposition system provides a structured but time-limited mechanism for challenging conflicting applications. The strict 30-working-day deadline for oppositions demands proactive monitoring, and the requirement for Chilean legal representation means foreign applicants and opponents must plan ahead. For applicants, a thorough pre-filing search remains the most effective way to avoid costly conflicts.