In Chile, trademark oppositions are governed by the IP Law and are examined by the Chilean Trademark Office (INAPI). We have to consider that while an opposition is filed, the Chilean TMO will still run its own examination and can issue an office action based on absolute and relative grounds.

Both the opposition and the office action will be notified on the same day to the applicant and will have the opportunity to defend its application, with a reply within 30 business days (no extension is possible).

Grounds for Opposition:

Oppositions can be filed on various grounds, including:

– Likelihood of Confusion: The opposing party argues that the trademark in question is similar to their own registered trademark, potentially leading to confusion among consumers.

– Likelihood of Confusion with a prior foreign trademark: an opponent, which does not own a prior trademark in Chile, can still oppose it based on its foreign trademark, as soon as it can prove it is a famous and notorious trademark in its country of origin.

– Descriptiveness: If the trademark is deemed descriptive of the goods or services it represents, it may be opposed on the grounds of lacking distinctiveness.

– Public Interest: Opponents may argue that the registration of the trademark would be contrary to public order, morality, or public interest.

The Opposition Process:

– Filing the Opposition: The opposing party must submit a formal opposition to the Chilean TMO, within the timeframe of 30 business days after publication of the application.

– Response: Upon receiving the opposition, the applicant has the opportunity to respond, presenting arguments and evidence in support of its application, within 30 business days after the notification.

– Evidence Phase: Both parties may submit evidence to support their respective positions, such as market surveys, sales data, and evidence of prior use. This stage is important if the opponent claims that its trademark is well-known or famous.

– Decision: the TMO evaluates the arguments and evidence presented by the parties and takes a decision either upholding the opposition, or rejecting it.

Strategies for Success:

– Limit the scope of protection: A limitation can help find an agreement with the opponent. Besides, the TMO could also be convinced by it and concludes there is no likelihood of confusion.

– Gather Evidence: Compile compelling evidence to support your position, including documentation of prior use, consumer surveys, and market research data. That is important especially if the opponent bases its action on the lack of distinctiveness of our application.

– Negotiation: In some cases, it may be beneficial to engage in negotiation with the opposing party to reach a mutually acceptable resolution.

However, coexistence agreements are hardly accepted by the TMO. The Office analyses if the trademark in conflict could lead to a likelihood of confusion, independently of private agreement between the parties.