Trademarks in Latin America: The balance between fame and mandatory use

By Fernanda Chamorro & Gabriel Vargas

Within the industrial property system in Latin America, the relationship between exclusive rights and actual commercial activity has taken center stage. For years, various legislations allowed registrations to remain in force without the need to prove real economic activity. However, the current regional trend is moving towards a model where real and effective use is indispensable to maintain the exclusivity of a trademark.

This scenario forces trademark owners to resolve a practical problem: how to maintain broad protection based on fame while complying with mandatory use requirements.

Mandatory use as a regional standard

In most Latin American countries, mandatory use is the primary tool to prevent registries from becoming saturated with signs that are not present in the market. Regional legislation establishes specific deadlines for a trademark to become vulnerable to cancellation actions. Regional regulations implement this control through two avenues: the administrative declaration of use and the cancellation action.

In legislations such as Mexico and Argentina, the owner has the proactive obligation to file sworn declarations of use within specific timeframes (such as in the third year or halfway through the term) to avoid automatic cancellation of the registration. Conversely, in countries like Chile, Peru, Colombia, Ecuador, and Bolivia, use is controlled through cancellation actions that third parties may file if the trademark is not used for periods of five or three years, respectively.

For the owner, registration is only the first step, but effective use is the way to solidify the right, which has become mandatory either through an administrative declaration or as a defense against a cancellation action.

The Well-Known Trademark and the burden of formalization

In the face of use requirements, fame offers a strategic advantage by allowing an exception to the principle of specialty. This empowers the owner to prevent third parties from registering similar signs, even in classes of products or services that bear no direct relationship to their main line of business.

However, this special protection usually imposes additional burdens. In jurisdictions like Chile, when a third-party registration is successfully opposed based on the fame of a foreign trademark, the law requires the owner of the well-known trademark to apply for its own registration within 90 days. This mechanism ensures that fame is formalized in the national registry and does not become a permanent blockage without a real intention of establishing a presence in the local market.

The dichotomy between recognition and activity

The conflict between Manchester City and the Chilean club Santiago City illustrates this situation. The English club, relying on its global recognition, sought to stop the use of a similar logo in a territory where its commercial presence in certain categories (such as local sports services) could be questioned for lack of effective use.

This case confirms a fundamental dichotomy: the system rewards commercial success by granting protection that transcends specialty, but sanctions inactivity through mandatory use. Even if an owner protects their sign by invoking its international fame and complies with mandatory registration deadlines, the trademark will become vulnerable again if it does not initiate real exploitation within the three or five-year terms that govern the region.

Conclusions

Trademark law in Latin America today demands an active presence. The enhanced protection of fame is an important benefit, but it requires, in counterpart, compliance with the obligation of use. The legal certainty of trademarks depends on the coherence between what is protected on paper and what is actually marketed in the local market.

For professionals in Latin America, the strategy must consider three key points:

-Portfolio Audit: Verify that the registered coverage matches commercial reality.

-Documentation of Fame: Back up fame with constant evidence of sales and advertising investment to extend protection.

-Deadline Management: Consolidate the recognition of fame through registration and effective use.