What to do if my trademark is rejected
During the trademark registration in Chile procedure, it is possible to face a situation in which the administrative authority or a third party challenges the application filed. For this reason, many applicants ask what to do if my trademark is rejected.
The rejection of a trademark may occur at different stages of the procedure and for different reasons. Depending on the case, the rejection may arise from a substantive objection issued by the National Institute of Industrial Property, INAPI, or from an opposition filed by a third party holding prior rights.
Understanding what to do if my trademark is rejected makes it possible to respond properly within the procedure and, in certain cases, to appeal before higher authorities.
You can review general information about the trademark system at trademarks at INAPI.
What to do if my trademark is rejected: quick answer
If you need to know quickly what to do if my trademark is rejected, the first step is to identify the stage at which the problem occurred. Receiving a substantive objection from INAPI is not the same as facing an opposition filed by a third party or receiving a final decision rejecting the application.
In general terms, the main actions are to review the grounds for rejection, respond within the corresponding deadline, prepare legal arguments on distinctiveness or coexistence, and evaluate whether an appeal before the Industrial Property Court is appropriate. For that reason, what to do if my trademark is rejected will depend on the type of decision, the background cited by INAPI and the applicant’s trademark strategy.
Administrative rejection due to a substantive objection
One of the most frequent scenarios when analyzing what to do if my trademark is rejected is the existence of a substantive objection issued by INAPI during the examination of the application.
Substantive objections may arise when the authority considers that:
- the trademark is similar to a previously registered trademark
- the sign lacks distinctiveness
- the trademark is descriptive of the product or service
- there are legal grounds preventing registration
When a substantive objection is issued, the applicant must respond to the objection within the legal deadline, submitting legal arguments that justify the admissibility of the registration.
At this administrative stage, it is essential to prepare the response properly, because answering the objection is the first step in the strategy regarding what to do if my trademark is rejected.
Why it is not advisable to abandon the application immediately
When a trademark receives a substantive objection, this does not always mean that registration is impossible. In many cases, the application may still be defended through a well-founded response, especially if there are arguments based on graphic, phonetic or conceptual differences, the scope of goods or services, coexistence in the market or acquired distinctiveness.
INAPI even provides forms related to compliance with substantive objections, which confirms that this stage is a normal part of the registration procedure and does not necessarily represent the immediate end of the application.
For this reason, when evaluating what to do if my trademark is rejected, it is important not to confuse a substantive objection with a final decision. The objection opens an opportunity to defend the application before INAPI issues a final decision.
Contentious rejection due to a third-party opposition
Another possible scenario when analyzing what to do if my trademark is rejected is the existence of a trademark opposition filed by a third party.
Oppositions may be filed when the owner of a registered trademark considers that the new application may create confusion with their trademark.
In these cases, a contentious proceeding begins, in which the applicant must answer the opposition claim, submitting legal arguments to defend the viability of the registration.
This procedure is directly related to the trademark opposition system.
In some cases, the following may arise simultaneously:
- substantive objections from INAPI
- third-party oppositions
This may even occur in relation to different trademarks cited as background.
Therefore, the first action when analyzing what to do if my trademark is rejected is usually to properly answer the objections and/or opposition claims within the administrative procedure.
Importance of acting within the administrative procedure
An essential part of what to do if my trademark is rejected is acting in a timely manner during the proceeding before INAPI. The administrative stage allows the applicant to submit arguments, provide background information and explain why the trademark applied for meets the legal requirements for registration.
In addition, INAPI explains that, before filing an application, the applicant must be clear about which trademark they wish to apply for and which goods or services they want to distinguish, because once the application has been filed, the requested trademark cannot be changed and new goods or services cannot be added. This makes the initial strategy highly relevant, but also means that the later defense must be built on the application as originally filed.
Therefore, when analyzing what to do if my trademark is rejected, the answer should not be limited to considering an appeal. First, it is necessary to review whether there is a defense path within the administrative procedure itself and whether the arguments were properly raised before turning to a higher authority.
Appeal before the Industrial Property Court
If the trademark application is finally rejected at the administrative stage, the applicant may appeal before the Industrial Property Court, TDPI. According to INAPI, in the event of rejection of a trademark application, it is possible to file an appeal before that court within 15 business days.
In this case, an appeal must be filed and prepared in accordance with the requirements established in the Code of Civil Procedure.
For the appeal to be admissible, it is essential that the applicant has previously participated in the administrative procedure, which means having answered the substantive objections or the oppositions filed.
For this reason, understanding what to do if my trademark is rejected requires acting in a timely manner at the administrative stage before going before the Industrial Property Court.
You can review institutional information about the industrial property system at INAPI.
Appeal in cassation before the Supreme Court
In certain cases, decisions issued by the Industrial Property Court may also be challenged through an appeal in cassation on the merits before the Supreme Court.
This remedy is used when it is considered that the court’s decision has incorrectly applied the law.
The appeal in cassation is an extraordinary stage within the trademark protection system and usually requires a detailed legal analysis of the case.
What to do if my trademark is rejected: main steps
When analyzing what to do if my trademark is rejected, the main actions are usually:
- Review the objections issued by INAPI
- Properly answer the substantive objections
- Respond to any third-party opposition
- Evaluate the viability of an appeal
- Consider the possibility of going before the Industrial Property Court
Conclusion
Understanding what to do if my trademark is rejected makes it possible to act in a timely manner within the registration procedure and use the legal mechanisms available to defend the application.
The rejection of a trademark does not always mean the end of the procedure. In many cases, a proper response to objections or an adequate defense against oppositions may allow the applicant to continue with the trademark registration in Chile process.