Counterclaim action or exception? The defense of the third party defendant against the non-use of the trademark by its owner in Chilean law. Reflections on the European system

The objective of this work is to analyze, in the chilean trademark system, the possibility that a third party defendant in a litigation - where an alleged trademark violation, nullity, or in the opposition process is discussed - can request by way of exception, the declaration of expiration of the right over the trademark, for not being used by its owner during a period of five years. The above, since in Chile the current Industrial Property Law N° 19.039, in article 27, recognizes the institution of expiration due to lack of use of the trademark; however, section C of that rule only legitimizes the third party sued by the trademark owner to exercise said action in its defense through counterclaim. Our thesis concludes that, in some cases, it is more advantageous for the third party defendant –from a procedural perspective– to declare the revocation action as an exception in its defense and not through counterclaims. To do this, this study is based on the comparative law method where I will analyze the different criteria outlined from the european level regarding the topic and the regulatory changes produced in the last reform of 2022 in Chile.