The Spanish SME Tortillas Bravas, S.L. owned the word trade mark LA GRAN BRAVA in Spain.
The company decided to register this trade mark abroad too, in particular in Germany, the United Kingdom, the United States of America and Chile.
Registration in the first three countries was easily obtained with a single application for the international registration of trade marks through the Madrid System. However, the Spanish company had to file a separate national application in Chile, since this country is not a contracting party to the Madrid System.
Get familiar with local particularities. Although the Chilean intellectual property system is largely aligned with that of European countries, Chile is pending accession to the Madrid System, the WIPO treaty that enables the international registration and management of trade marks worldwide.
In Chile, a trade mark cannot be cancelled on the grounds of non-use. Real and effective use is currently not a legal requirement for its validity. However, Chile is currently considering introducing trade mark cancellation on this ground. Please consult our News section.
The INAPI examines relative grounds for refusal on its own initiative. Consequently, they can reject a trade mark application based on an earlier trade mark, even if the owner has not lodged an opposition.
Seek local IP advice to determine how to proceed according to your circumstances. A Chilean IP lawyer could have warned the Spanish SME about the substantive and procedural differences. Another registration strategy could have been set to ensure the acceptance of the trade mark application on the first try.