Vozinha and INAPI: the limits of opportunistic trade mark registration

Background

The 2026 World Cup turned Vozinha – whose real name is Josimar José Évora Días – an experienced goalkeeper for the Cape Verde national team, into one of the tournament’s biggest revelations. His performances caught the attention of numerous fans and ultimately led to him joining Colo Colo, who finally announced his signing after several weeks of negotiations.

However, whilst the transfer had not yet been finalised, developments began to unfold off the pitch. Within a few days, two applications were submitted to the National Institute of Industrial Property (INAPI) to register the ‘Vozinha’ trademark in Chile: one for food supplements in class 5 and another for clothing and various goods in class 25.

The news immediately gave the impression that the goalkeeper – or even Colo Colo – might face difficulties in using the name “Vozinha” commercially, whether on official shirts, licensed products or other initiatives linked to his image.

However, from a legal perspective, the situation is considerably more complex. The case provides a good example for analysing one of the best-known phenomena in trade mark law: so-called ‘trademark squatting’ or opportunistic trade mark registration.

Opportunistic trademark registration

Sometimes, the fame of a person, company or product arises almost instantly. A sporting championship, a blockbuster film, a viral song or a media event can, in a matter of days, turn a virtually unknown name into an asset of significant economic value.

This phenomenon is often accompanied by attempts by third parties to register that sign quickly, before anyone who could reasonably exploit it commercially has the opportunity to do so. The practice is known internationally as ‘trademark squatting’ and has been extensively studied both by legal scholars and by the World Intellectual Property Organisation (WIPO). The rationale is simple: to exploit the registration system to secure an advantageous legal position in relation to a sign whose value has been generated by someone else.

Sometimes, the aim is not even to develop a business under that trademark. The real interest may lie in acquiring a legal position that allows for subsequent negotiations with the party who would reasonably be expected to exploit that sign.

Precisely for this reason, the phenomenon does not affect only large multinationals. It also affects artists, sportspeople, content creators, companies that have not yet entered a particular market, and even individuals whose fame arises completely unexpectedly – as might have been the case with Vozinha following his outstanding performance at the World Cup.

Is it enough simply to file an application with INAPI?

The answer is clearly no.

One of the most common misconceptions is the belief that filing an application automatically confers an exclusive right to a trade mark.

In reality, the registration procedure involves several stages. The application must pass INAPI’s examination, be published for the information of third parties, and may be subject to opposition by those who consider that the registration affects pre-existing rights or infringes any of the prohibitions set out in the Industrial Property Act. Even once granted, the registration may subsequently be challenged in the cases provided for by law.

Therefore, the mere filing of an application does not allow one to conclude that the applicant will ultimately acquire an exclusive right to the sign applied for.

Good faith: much more than simply being first to file

Although the Chilean trade mark system generally follows the ‘first to file’ principle, this does not mean that the first person to file an application is automatically entitled to registration.

The Industrial Property Act itself incorporates mechanisms designed to prevent the registration system from being misused. Among these, Article 20(k) stands out, which declares that signs whose registration would be contrary to the principles of fair competition and commercial ethics are not registrable.

It is precisely here that a particularly interesting legal question arises. Traditionally, this provision has been interpreted by reference to the concept of good faith in the Civil Code. However, a significant body of national legal scholarship has argued that its true basis should be found in Article 3 of Law No. 20.169 on Unfair Competition. Under this view, good faith is no longer understood solely as subjective ignorance of another’s right, but is instead assessed in accordance with objective standards of fair conduct in the market. This is no minor change, as it shifts the analysis from the applicant’s internal intention to the economic function that the application for registration actually pursues.

For years, this provision has been applied mainly to cases where a third party attempts to appropriate a sign legitimately used by another. However, both legal doctrine and comparative law have gradually developed a broader conception of good faith in trade mark matters.

The most recent trend in legal scholarship, inspired largely by European case law, holds that good faith in trade mark matters cannot be reduced to a third party’s mere lack of knowledge. It must be assessed in accordance with objective parameters of market conduct and taking into account the purpose pursued by the application.

Consequently, the relevant question is no longer solely whether the applicant was aware of the existence of ‘Vozinha’. The real legal question is whether the application serves a legitimate purpose of identifying one’s own goods in the market or whether, on the contrary, it seeks to capitalise on another’s reputation, prevent the party who could naturally exploit that sign from registering it, or place itself in a more favourable position vis-à-vis the party who could reasonably exploit that sign.

In other words, the debate does not revolve solely around the chronological order of the applications, but also around the intended use of the trade mark system itself.

How is bad faith assessed?

The existence or otherwise of bad faith can hardly be determined on the basis of a single factor. Comparative case law, particularly that developed by the Court of Justice of the European Union, has repeatedly held that a comprehensive assessment must be made of all the circumstances prevailing at the time of filing the application.

Among the factors usually taken into account are prior knowledge of the sign used by a third party, the timing of the application, the existence of a genuine intention to use the trade mark in trade, the purpose pursued by the applicant, and any intention to prevent another party from legitimately exploiting that same sign.

Although our legislation does not use this classification, comparative legal doctrine generally distinguishes these cases into three broad categories: registrations intended to appropriate signs used by third parties (parasitic applications), registrations whose objective is to hinder the activities of another economic operator (obstructionist applications); and registrations that exploit the trade mark system for purposes unrelated to its intended function (fraudulent applications).

Naturally, the presence of any of these elements does not automatically establish bad faith. Each case must be analysed in the light of its particular circumstances. However, it is difficult to ignore the fact that, in the Vozinha case, the applications were filed precisely after the footballer had gained international prominence during the World Cup and at a time when his potential move to Colo Colo was making daily headlines in the Chilean sports press.

It is these facts, together with any others that may be established during the proceedings, which, where appropriate, must be weighed up in accordance with the rules of trade mark law.

Who might oppose the applications?

If these applications proceed, there may be various parties with a legitimate interest in intervening in the proceedings.

Firstly, Vozinha himself, whose sporting name constitutes an essential element of his professional identity and his commercial profile as an athlete. But the interest does not necessarily end there. Depending on the contractual structure agreed between the parties, Colo Colo might also have a direct economic interest in preserving the possibility of commercially exploiting the player’s name through official merchandise, commercial licences and other products associated with his signing for the club.

Consequently, the analysis goes far beyond the simple question of who first filed an application with INAPI and requires a weighing up of all the legal and economic interests at stake.

Final thoughts

The Vozinha case demonstrates how a sporting event can, in the space of just a few weeks, transform a virtually unknown name into an economic asset of enormous value.

In my view, cases of this kind demonstrate that the debate cannot be reduced to a question of who filed an application first. The real analysis lies in determining whether the registration system is being used to fulfil the proper function of trade marks or to appropriate value generated by third parties. Ultimately, the trade mark system does not merely protect individual interests; it also safeguards the proper functioning of the market. When an application seeks solely to appropriate the reputation generated by a third party or to hinder their future commercial activity, it ceases to fulfil the proper function of trade mark law and begins to raise an issue of fair competition.

It is precisely for this reason that trade mark law cannot be limited to rewarding the speed of the first party to file an application. The aim of these rules is to ensure that the system operates in accordance with the requirements of fair competition and good faith, preventing registration from becoming a mechanism for appropriating the economic value generated by third parties. Trademark law must provide equally robust safeguards to prevent such reputation from being opportunistically captured through the registration system.

Trademark law protects the first to register, but it should not protect the first to attempt to appropriate the reputation created by another.