The Power of Unregistered Marks in Chile: Prior Use as a Ground for Opposition

Chile operates a first-to-file trade mark system, meaning that exclusive rights are generally granted to the party that registers first, not the party that used the mark first. However, Chilean law contains a significant exception that catches many applicants off guard: prior use of an unregistered mark in the Chilean market can serve as a valid ground to oppose — and defeat — a new trade mark application. Understanding how this exception works, and its practical limits, is essential for both applicants and existing brand owners who rely on use rather than registration.

The Legal Basis: Article 20(h) and Prior Use

Article 20(h) of Law No. 19,039 prohibits the registration of signs that are identical to, or that graphically or phonetically resemble in a confusing manner, not only earlier registrations and pending applications, but also marks that have been effectively used in Chile prior to the application date. This means an unregistered mark that is in actual use in the Chilean market is recognised as a prior right capable of blocking a later application.

This provision reflects Chile’s compliance with the Paris Convention and the TRIPS Agreement, which require member states to provide a degree of protection to marks that are actually used in their territory, even without formal registration.

What “Effective Use” Means

The standard is not merely token or incidental use. To qualify as a prior right under Article 20(h), the unregistered mark must have been put to actual, effective, and prior use in the Chilean market before the filing date of the contested application. INAPI and the Industrial Property Court evaluate the following factors:

• Actual commercial activity in Chile: The mark must have been used in connection with the sale or promotion of goods or services within Chilean territory. Use in other countries, without a connection to the Chilean market, does not qualify.
• Continuous and consistent use: Isolated or sporadic instances of use are unlikely to be sufficient. The prior user must demonstrate a pattern of commercial activity that shows the mark was genuinely established in the market.
• Temporal priority: The use must demonstrably predate the filing date of the contested application. Documentary evidence with clear dates is essential.
• Connection to the same or similar goods or services: The prior use must relate to goods or services that are the same as, or similar to, those covered by the contested application. Prior use of a mark for restaurant services does not automatically block an application for the same mark covering software.

Evidence of Prior Use

The burden of proof falls entirely on the party claiming prior use. In opposition proceedings before INAPI, the prior user must submit compelling documentary evidence, which may include:

• Invoices and sales records: Dated commercial documents showing transactions under the mark in Chile.
• Advertising materials: Print advertisements, digital marketing campaigns, social media presence, and promotional materials directed at Chilean consumers, with verifiable dates.
• Contracts and commercial agreements: Distribution agreements, supply contracts, or licensing arrangements that reference the mark and demonstrate its use in Chilean commerce.
• Customs and import records: Documentation of goods bearing the mark entering Chilean territory.
• Photographs and packaging: Images of products bearing the mark as sold in Chile.
• Media coverage: Press articles, reviews, or mentions in Chilean media that reference the mark in a commercial context.
• Website and e-commerce evidence: Screenshots of websites or online marketplaces showing the mark being used to offer goods or services to Chilean consumers, with timestamps.

The evidence must be Chile-specific. International use, no matter how extensive, does not substitute for actual use in the Chilean market.

The Limits of Prior Use Rights

While prior use provides a defensive shield, it is important to understand its limits within Chile’s first-to-file framework:

• Prior use is primarily defensive: It allows the prior user to oppose a conflicting application or defend against infringement claims. It does not, by itself, grant the exclusive right to use the mark or the right to prevent third parties from registering or using similar marks in other classes or for unrelated goods.
• Registration provides stronger rights: A registered trade mark grants exclusive rights enforceable through the full range of remedies under the Industrial Property Law — including criminal actions, civil litigation, and border measures. Unregistered marks cannot access most of these enforcement tools.
• Civil protection under the Unfair Competition Law: If the prior user does not hold a registration, civil enforcement against infringers may still be available under Chile’s Unfair Competition Law (Law No. 20,169), but not under the Industrial Property Law itself.
• No substitute for registration: Prior use creates minimal rights. Without a registration, enforcement options are limited, costly, and uncertain. The practical message is clear: use alone is not enough. Register your mark.

Prior Use as a Distinctiveness Argument

Beyond opposition proceedings, prior use in Chile can also serve as evidence of a mark’s acquired distinctiveness. If an applicant’s mark faces a descriptiveness refusal under Article 20(e), evidence that the mark has been used in the Chilean market and is recognised by consumers as a brand can help overcome the objection. In this way, prior use serves a dual purpose: blocking conflicting applications and supporting the registrability of the applicant’s own mark.

Strategic Recommendations

• Register, do not rely on use alone: Chile’s first-to-file system means that registration is the primary mechanism for establishing and enforcing trade mark rights. Prior use is a fallback, not a strategy.
• Maintain records of use from day one: If you are using a mark in Chile without registration, keep meticulous records of all commercial activity — invoices, advertising, contracts, customs records — in case you need to prove prior use in an opposition or defence.
• Monitor the Official Gazette: If you rely on an unregistered mark, you must actively monitor new trade mark applications in Chile. The 30-working-day opposition window is your primary opportunity to block a conflicting filing.
• File early when expanding to Chile: If you plan to enter the Chilean market, file your trade mark application before or simultaneously with your market entry. Do not assume that use in other countries provides protection in Chile.
• Combine use evidence with registration: Once you have accumulated evidence of use in Chile, consider filing a trade mark application that leverages that evidence to support both registrability and scope of protection.

Common Mistakes

• Assuming prior use equals registration: Prior use creates limited defensive rights, not the comprehensive exclusive rights conferred by registration.
• Relying on international use: Only use in the Chilean market counts. Extensive use in the United States, Europe, or neighbouring Latin American countries does not establish prior use rights in Chile.
• Failing to document use: Without dated, Chile-specific evidence, a prior use claim cannot be substantiated before INAPI or the courts.
• Missing the opposition window: The 30-working-day opposition period is strict. If you do not monitor new applications, a conflicting mark may be registered before you have a chance to act.
• Assuming enforcement is straightforward: Without registration, enforcement of an unregistered mark is limited and often requires proceedings under the Unfair Competition Law rather than the Industrial Property Law.

Key Takeaway

Chile’s first-to-file system is tempered by a meaningful prior use exception. A party with actual, effective, and prior use of a mark in the Chilean market can oppose a later application and potentially block its registration. However, prior use rights are defensive and limited compared to the comprehensive protections afforded by registration. For businesses operating or planning to operate in Chile, the message is unambiguous: prior use is a safety net, not a substitute for timely registration. Maintain evidence of use as insurance, but pursue registration as the foundation of your trade mark strategy.