Well-Known Marks in Chile: Article 20(g) and Cross-Class Protection

Chile’s trade mark system recognises that certain marks enjoy a level of fame or notoriety that entitles them to protection beyond their registered classes. Under Article 20(g) of Law No. 19,039, a trade mark application may be refused if it is identical or similar to a mark that is already registered in Chile and is well known (notoria), even if the application covers different and unrelated goods or services — provided there is a connection that could harm the interests of the well-known mark’s owner. This extended protection is one of the most powerful defensive tools available under Chilean trade mark law.

The Legal Basis: Article 20(g)

Article 20(g) provides that a sign may not be registered as a trade mark if it is identical or similar to a mark that is registered in Chile and is well known (“notoria”), where the proposed registration covers different and unrelated goods or services, provided that:

• There exists some connection between the goods or services of the well-known mark and those of the contested application; and
• The registration of the contested mark is likely to harm the interests of the owner of the well-known registered mark.

This provision implements Chile’s obligations under the Paris Convention and the TRIPS Agreement, which require member states to provide enhanced protection for well-known marks. It also reflects the domestic policy of preventing dilution, free-riding, and unfair advantage-taking from the reputation of established brands.

Well-Known Marks Without Registration in Chile

Article 20(g) refers specifically to marks that are registered in Chile and are well known. However, Chile also provides protection to unregistered well-known marks, consistent with its obligations under the Paris Convention. Under Chilean case law and INAPI practice, a party that owns a mark that is famous and notorious in its country of origin — even without a prior Chilean registration — can successfully oppose a new application if they demonstrate that their mark has reached the level of notoriety required.

Specifically, the law provides that if a trade mark registration is refused or cancelled because it conflicts with a mark that is well known abroad, the holder of the foreign well-known mark has 90 days to file their own application in Chile. If they fail to do so, the mark becomes available for any person to apply for, with the party whose application was refused or cancelled having priority during the following 90 days.

What Makes a Mark “Well Known”?

Chilean law does not have a formal administrative procedure for declaring a mark well known, unlike some jurisdictions (such as Mexico’s famous mark declaration). Instead, the well-known status is assessed on a case-by-case basis during the proceedings in which it is invoked — typically an opposition, cancellation, or examination. The party claiming well-known status must submit evidence each time the claim is raised.

INAPI and the Industrial Property Court evaluate the following factors when determining whether a mark is well known:

• Degree of knowledge among the relevant public: Unlike some systems that require knowledge among the general public, Chile focuses on recognition within the relevant sector — i.e., the consumers, traders, and professionals who deal with the type of goods or services in question.
• Duration and extent of use: How long and how widely the mark has been used, both in Chile and internationally.
• Geographical reach: Whether the mark is known across Chile or only in specific regions, and its recognition in other countries.
• Advertising and promotional activity: The scale and reach of marketing campaigns, both in Chile and internationally.
• Registrations in other countries: A portfolio of registrations across multiple jurisdictions supports a claim of international notoriety.
• Commercial value: Brand valuation data and revenue figures associated with the mark.
• History of successful enforcement: Prior opposition or cancellation victories that recognised the mark’s well-known status can be persuasive.

The Dual Protection Framework

Chile’s well-known mark protection operates on two levels:

• Within the same class (Article 20(h)): Any identical or confusingly similar mark in the same class is blocked through the standard likelihood of confusion analysis, regardless of whether the prior mark is well known.
• Across different classes (Article 20(g)): Well-known marks receive the additional benefit of blocking applications in different classes, provided there is a connection between the goods or services and a likelihood of harm to the well-known mark’s owner.

This cross-class protection is not unlimited. It requires a demonstrable connection — for example, that consumers would likely believe the goods or services of the contested application originate from, or are endorsed by, the well-known mark’s owner. Pure coincidence in different, unconnected industries may not trigger the protection.

The Unfair Competition Angle

Chile’s Unfair Competition Act (Ley de Competencia Desleal, Law No. 20,169) provides an additional layer of protection for well-known marks. The Act implicitly recognises dilution as a ground for legal action, and indirectly supports oppositions under Article 20(k) of the Industrial Property Law, which prohibits marks that violate principles of fair competition and business ethics. A well-known mark owner can argue that a third party’s application or use constitutes unfair exploitation of the mark’s reputation.

Strategic Recommendations

• Compile evidence proactively: Do not wait until a conflict arises. Maintain a dossier of evidence supporting the well-known status of your mark — including consumer recognition data, advertising expenditure, sales figures, media coverage, and international registration records — ready for use in any proceeding.
• Monitor across all classes: If your mark is well known, monitor the Chilean register broadly, not just in your core classes. Third parties may attempt to register in peripheral classes where you are not present.
• Register broadly in Chile: While Article 20(g) provides cross-class protection, holding registrations in your core classes strengthens your position. A registered well-known mark is easier to enforce than one that must be proven well known from scratch in each proceeding.
• Act within the 90-day window: If a conflicting registration is refused or cancelled because of your well-known mark, file your own Chilean application within 90 days to secure the registration for yourself.
• Leverage the Unfair Competition Act: For marks that face threats from use rather than registration (e.g., online infringement or unauthorized use in commerce), the Unfair Competition Law provides remedies that complement the Industrial Property Law.

Common Mistakes

• Assuming international fame is automatic protection: Chile assesses well-known status based on evidence. International fame must be demonstrated with supporting documentation — it is not presumed.
• Failing to submit fresh evidence each time: Because Chile has no formal well-known mark declaration, the status must be proven anew in each proceeding. Relying on a prior finding without updated evidence is risky.
• Overestimating cross-class reach: Article 20(g) requires a connection between the goods and a likelihood of harm. It does not provide absolute protection across all classes and all goods.
• Neglecting to register in Chile: Well-known mark protection is powerful, but it is not a substitute for registration. A registered well-known mark is significantly easier to enforce.
• Missing the 90-day filing window: When the law creates a window for the well-known mark holder to file their own application, missing it forfeits the priority right.

Key Takeaway

Well-known mark protection under Article 20(g) is one of the most powerful defensive tools in Chilean trade mark law — it extends the reach of a mark beyond its registered classes and can block applications across different product and service categories. Critically, a foreign mark owner without a prior Chilean registration can invoke this protection if they demonstrate the mark is well known in its country of origin. However, the protection is evidence-dependent, case-specific, and not unlimited in scope. Proactive evidence gathering, broad monitoring, strategic registration in core classes, and prompt action within statutory deadlines are essential to making the most of this protection.