The 5-Year Non-Use Revocation Rule in Chile: The “Short Law” That Changed Everything

In a landmark reform that brought Chile into alignment with international standards, Law No. 21,355 — commonly known as the “Short Law” (Ley Corta) — came into force on May 9, 2022, introducing for the first time a mechanism to cancel trade mark registrations that are not put to genuine use. Before this reform, Chile had no use requirement for maintaining a trade mark registration, which meant that the register was clogged with “deadwood” marks — registrations held speculatively, defensively, or by parties who never intended to use them in the Chilean market. The non-use revocation action fundamentally changes the landscape for every trade mark owner in Chile.

The Legal Basis: Article 27 bis A of Law No. 19,039

The Short Law inserted a new Article 27 bis A and related provisions into Chile’s Industrial Property Law (Law No. 19,039). Under these provisions, a trade mark registration may be cancelled, in whole or in part, if:

• The trade mark has not been put to real and effective use in Chilean territory for a continuous period of five years from the date registration was granted (by the owner, or by a third party with the owner’s consent), to distinguish one or more of the goods or services for which the registration was granted; or
• Such use was uninterruptedly suspended for the same five-year period.

This means that simply holding a registration is no longer sufficient. The mark must be actively and genuinely used in the Chilean market.

Which Registrations Are Affected?

The transitional rules are critical to understanding the scope of this reform:

• Registrations granted after May 9, 2022: The five-year non-use period begins running from the date of registration. A cancellation action can be filed once five years have elapsed without genuine use.
• Registrations granted before May 9, 2022: These registrations are not immediately vulnerable. The five-year non-use period begins running only from the date of the first renewal occurring after May 9, 2022. This grace period gives existing owners time to begin genuine use before the new rules apply.

It is important to note that Chile, unlike Mexico, does not require a separate declaration of use filing. There is no affirmative obligation to file proof of use with INAPI at any point. Instead, the non-use cancellation is a third-party action — it is triggered only when an interested party files a cancellation request.

What Constitutes “Real and Effective Use”?

The law requires that use be “real and effective” in Chilean territory. While the statute does not define this phrase in detail, it is understood — consistent with international practice — to require:

• Genuine commercial activity: The mark must be used in connection with actual sales, distribution, or provision of goods or services in Chile. Token or symbolic use — such as a single isolated sale — is insufficient.
• Use in Chile: Exports bearing the mark, international advertising, or use in other markets does not satisfy the requirement. The use must occur within Chilean territory.
• Use for the registered goods or services: The use must relate to the goods or services actually covered by the registration. Use of the mark for unrelated products does not protect the registration from cancellation for goods that are not being used.
• Use by the owner or an authorised party: Use by a licensee or an authorised third party with the owner’s consent counts, provided the relationship is documented.

The Burden of Proof

This is one of the most significant features of the Chilean system: the burden of proving use falls on the trade mark owner, not on the party requesting cancellation. The rationale is straightforward — the owner is the party best positioned to demonstrate that the mark has been used. The cancellation petitioner need only demonstrate a legitimate interest in requesting the cancellation and does not need to prove non-use.

This inversion of the burden means that trade mark owners must maintain organised records of use at all times, including:

• Sales invoices and receipts from Chilean transactions.
• Distribution and supply agreements for the Chilean market.
• Advertising materials, product catalogues, and promotional campaigns directed at Chilean consumers.
• Photographs of products as sold in Chile, bearing the mark.
• Import and customs records for goods entering Chile under the mark.

Total and Partial Cancellation

The cancellation action may result in either total or partial cancellation. If the mark has been used for some but not all of the registered goods or services, the registration will survive for those goods or services for which genuine use is proven. Only the unused portion is cancelled. This is an important nuance — broad registrations covering many goods face partial cancellation risk for any categories where the mark is not actively used.

Cancellation as a Defence: The Counterclaim

One of the most powerful features of the Short Law is the ability to raise a non-use cancellation as a counterclaim in opposition or invalidation proceedings. If a party opposes your application based on a prior registration, and you believe the opponent’s mark is not in genuine use, you can counterclaim for cancellation of the opponent’s registration on non-use grounds. Both claims will be resolved together by INAPI. This effectively prevents owners of unused marks from leveraging them as blocking tools.

Justified Non-Use

The law recognises that non-use may be excusable in certain circumstances. The trade mark owner can justify a period of non-use by proving that it was caused by force majeure or circumstances entirely beyond the owner’s control, such as import restrictions, regulatory barriers, or official prohibitions that prevented the mark from being used in Chile. However, the owner bears the burden of proving these circumstances as well.

The Procedure

Cancellation actions for non-use are heard by INAPI at first instance. The procedure involves:

• Filing by an interested party who demonstrates a legitimate interest in the cancellation.
• Notification to the trade mark owner, who must respond with evidence of use.
• An evidence period for both parties to submit supporting documentation.
• A decision by the Director of INAPI granting or denying the cancellation, in whole or in part.
• Appeal to the Industrial Property Court for either party dissatisfied with the outcome.

No cancellation is issued ex officio — INAPI does not proactively audit registrations for use. The system relies entirely on third-party actions.

The Registered Trade Mark Symbol Requirement

Chilean law requires that a registered trade mark be used with indications showing its registered status. This can be the phrase “marca registrada,” the initials “M.R.,” or the ® symbol. Importantly, these indications must be in Spanish to comply with Chilean law. This requirement applies to packaging, advertising, and all forms of use in the Chilean market.

Strategic Recommendations

• Audit your portfolio: If you hold registrations in Chile — especially broad registrations covering many classes or goods — conduct an immediate audit to identify marks that are not in active use. Develop a plan to either commence use or accept the risk of cancellation.
• Maintain evidence of use: From the date of registration, keep organised records of all commercial activity under the mark in Chile. Do not wait for a cancellation threat to begin collecting evidence.
• Use the counterclaim strategically: If you face an opposition based on a mark you believe is not in use, the non-use cancellation counterclaim is a powerful defence. It can eliminate the opponent’s prior right entirely.
• Track transitional dates: For registrations granted before May 9, 2022, the five-year period begins at the first renewal after that date. Calendar these dates carefully.
• Consider narrowing broad registrations: If you hold registrations covering goods or services you have no realistic plan to use, consider whether a more focused registration better serves your interests under the new regime.

Common Mistakes

• Assuming pre-2022 registrations are permanently exempt: They are not. The five-year period begins running from the first renewal after May 9, 2022.
• Confusing this with a declaration of use requirement: Chile does not require a filing to INAPI proving use. The non-use cancellation is triggered by a third-party action, not a missed administrative deadline.
• Relying on international use: Only use in Chilean territory counts. The mark must be genuinely used in the Chilean market.
• Failing to document use: When a cancellation action is filed, the burden falls on the owner. Without organised evidence, the registration is at serious risk.
• Ignoring the counterclaim tool: If you face an opposition from a non-using mark owner, the counterclaim is your most effective weapon. Do not overlook it.

Key Takeaway

The introduction of non-use revocation by Law No. 21,355 is the most consequential change to Chile’s trade mark system in decades. It transforms the register from a repository of rights that could be held indefinitely without use into an active record of brands that are genuinely present in the Chilean market. For trade mark owners, the message is clear: use it, prove it, or risk losing it. The five-year clock is ticking, the burden of proof is on the owner, and the counterclaim mechanism ensures that unused registrations can no longer serve as blocking tools. Proactive portfolio management and meticulous record-keeping are no longer optional — they are essential.