A European technology company had built its brand across a dozen markets over several years. Then it discovered that a local operator in Chile had filed an identical trademark application. covering overlapping goods categories under the Clasificación de Niza (Nice classification) system. before the company had taken steps to protect its name in the Chilean market. The local filing appeared designed to extract a settlement or block the international brand from operating freely. The window to recover the mark was closing.
IP portfolio recovery in Chile. specifically the challenge of a bad-faith trademark registration. proceeds through opposition proceedings and cancellation actions before the Instituto Nacional de Propiedad Industrial (National Institute of Industrial Property, known as INAPI). A successful outcome depends on demonstrating prior use, international reputation, or bad faith at the time of the local filing. Timelines vary by procedure but typically range from several months to over a year, depending on whether the matter is contested.
This case study outlines how the matter was handled: the strategic choices made, the complications encountered, and the lessons that apply to any international business facing a similar threat in Chilean or Latin American markets.
Client profile and the challenge
The client was a mid-sized European software and services company. It had operated under a distinctive brand in its home market and across the EU for over a decade. Chile represented a planned expansion market. Before filing a local trademark application, the company identified that a third party had already registered an almost identical mark in the relevant Nice classification categories.
The local registrant had no apparent commercial activity under the mark. There was no product, no service, and no public presence. The IP registration appeared to be a speculative filing – a pattern sometimes called registro de mala fe (bad-faith registration) under Chilean intellectual property legislation.
The stakes were clear. Without recovering the mark, the client faced a choice between paying to settle, rebranding for the Chilean market, or abandoning the expansion. None of those options were acceptable. The company engaged a law firm in Chile to advise on the matter and retained Ferraz & Whitmore to coordinate the cross-border dimension. For context on how similar matters arise in another market, see our case study on IP portfolio recovery in the United States.
Legal strategy: opposition, cancellation, and the bad-faith argument
The core of the strategy rested on two parallel tracks. The first was a cancellation action before INAPI, arguing that the registration had been filed in bad faith. Chilean intellectual property legislation recognises bad faith as a ground for cancellation even after a mark has been granted. The key was to establish that the local registrant knew – or should have known – of the foreign brand's international reputation at the time of filing.
The second track involved building an evidentiary record of the client's prior use and international commercial presence. This meant gathering documentation of use in export markets, licensing activity, press coverage, and commercial agreements predating the Chilean filing. That record was then assessed against the Nice classification categories covered by the local application to identify any overlap.
The team also examined whether opposition proceedings remained available. Given the timeline, a direct opposition at INAPI was no longer possible – the registration had passed the opposition window. The cancellation route therefore became the primary instrument. Our broader intellectual property practice in Chile covers both tracks and the procedural requirements for each.
A secondary consideration arose around whether the client's own pending trademark application should be maintained during the cancellation process. The decision was to keep it active. This created a formal filing date on record and preserved the ability to obtain a grant quickly if the cancellation succeeded.
Key milestones and complications
The cancellation action was filed within six weeks of engagement. INAPI accepted the filing and initiated its examination process. The local registrant responded and contested the claim, arguing it had independent commercial intent and no knowledge of the foreign mark.
That defence created the central complication. The registrant introduced documentation suggesting limited commercial plans. While the plans appeared thin, they required rebuttal. The team responded with a more detailed evidentiary submission demonstrating the foreign brand's international profile and the implausibility of independent development of an identical mark in the same sector.
A second complication arose from the Nice classification scope. The local registration covered a broader range of categories than the client's intended use in Chile. Some categories were peripheral to the client's core services. The team had to argue across all categories while prioritising the ones most commercially significant. This required careful coordination between the substantive IP arguments and the commercial needs of the expansion plan.
INAPI issued a preliminary finding in favour of the cancellation application after approximately nine months. The registrant did not lodge a further appeal within the available period. The mark was cancelled. The client's pending trademark application then proceeded to grant without further opposition.
To receive a tailored assessment of your IP recovery options in Chile, contact us at info@ferrazwhitmore.com.
Transferable lessons for cross-border IP matters
File early in every target market. An IP registration in the home market or across the EU provides no automatic protection in Chile. Chilean intellectual property legislation operates on a first-to-file basis with limited exceptions for well-known marks. A bad-faith cancellation action is possible, but it is slower, more costly, and less certain than a preventive filing. Companies planning expansion into Latin American markets should file trademark applications in each jurisdiction as soon as the market enters the pipeline – not when it reaches the commercial launch stage.
Document international use systematically. The strength of a bad-faith or infringement claim in Chile depends heavily on evidence of prior commercial activity. That evidence must span the period before the local filing. Companies that maintain systematic records of export activity, licensing agreements, and marketing spend across markets are in a substantially stronger position. An infringement claim or cancellation action that lacks a credible evidentiary record is difficult to advance, even when the bad faith is apparent.
Understand the Nice classification overlap before engaging. Not all categories in a local filing create equal risk. The commercial damage from an adverse registration depends on which Nice classification categories are blocked. A detailed mapping exercise – comparing the local registration against the client's actual and planned product lines – should be the first analytical step. This determines both the urgency and the scope of any response. For companies with technology-adjacent brands, the intersection of IP and digital services regulation may also be relevant; our team's work on AI and technology law in Chile addresses those overlapping considerations.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our team combines Portuguese civil law expertise with English common law tradition to deliver cross-border legal solutions in intellectual property protection, portfolio recovery, and IP registration strategy. Working with a law firm in Chile with cross-border coordination experience is a material advantage in opposition proceedings and cancellation actions. Our attorneys have advised on IP matters across civil law and common law systems in Europe and Latin America. The firm's Americas practice, led by Marco Reyes, supports international clients facing IP disputes, infringement claims, and market entry challenges in Chile and across the region. Engaging a lawyer in Chile through a coordinated international team reduces both procedural risk and timeline. To discuss your situation and explore your options for IP portfolio recovery in Chile, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.