___Our
Company >
Successful Cases
1. Estudio Delion, representing the famous football clubs: Manchester United PLC (UK), Bayern Manchen AG (Germany), Futbol Club Barcelona (Spain) and Club Atlético River Plate A.C. (Argentina ).
Trade mark counterfeiting and product piracy are common in Peru as in all of Latin America. This criminal activity is presented in a variety of forms, but most often involves someone trying to apply for the registration of a trade mark, which is famous in another
country but has not yet been registered in Peru.
For example, third parties have applied to register the brands shown below in Peru. The football club brand owners – Manchester United PLC (Great Britain), FC Bayern München AG (Germany), Futbol Club Barcelona (Spain) and Club Atlético River Plate AC (Argentina) – filed oppositions based on the fact their trade marks are well known in the marketplace.
(Application 201345)
(Application 202029)
(Application 209545)
(Application 201340) 
The original owners did not have the evidence usually required to prove bad faith, such as business documents (letters, contracts, invoices) showing that they had developed a business relationship with the applicants or documentation that could prove the importation of goods by the opponents using these trade marks to Peru. However, the brand owners did provide the examiner with extensive publicity in the media (magazines, newspapers, TV and radio) proving that their football clubs’ names were famous brands in the marketplace.
Taking this into account, the Peruvian Trade Mark and Patent Office (INDECOPI) stated that the oppositions were well-founded by pointing out that it was obvious that the applicants knew that these brands belonged to third parties. We think this interpretation is right as well as justified and supported by Peruvian IP regulations, which prohibit the granting of a trade mark that has been applied for in bad faith, despite the fact that there is no conclusive evidence that proves the bad faith, since this can be inferred from the market by itself as well as from the knowledge of such a market by the people. This doctrine is called “circumstantial evidence”.
2.Estudio Delion ,
representing the U.S. well-known manufacturer of valves “ CRANE CO .” from USA
On October 2006, our advanced watch system detected a Peruvian company, “the infringer”, trying to enter into our country counterfeit GATE VALVES from China bearing the trademark “CRANE”.
The original owner, CRANE CO. from the U.S.A. , instructed our Law Firm to file an Infringement Action against the infringer. Consequently, on December 4 th , 2006 it was carried out an inspection of the merchandise within the customs warehouse as well as a precautionary measure ordered by the Infringement Division of the Peruvian Trademark Office-INDECOPI, consisting of the confiscation of the counterfeit merchandise.
During the inspection it was verified the existence of thirty two (32) wood boxes containing a total of 462 counterfeit gate valves.
On March 9, 2007 , INDECOPI issued the Resolution No.004306-2007/OSD-INDECOPI resolving the following:
- State FOUNDED the Infringement Action filed by CRANE CO. from the U.S.A. against the “infringer”. - Forbid the infringer to use “CRANE” brand name (as a word o design) in connection with valves belonging to international Classes 06, 07 ad 11, specifying this prohibition is extended to the warehousing, importation, exportation and/or trading in a non-authorized way goods corresponding to said classes bearing the “CRANE” trademark. |
- Confiscate in a definitive way the bogus valves.
- Sanction the infringer with a pecuniary penalty of approximately US$10,000.00 to be paid within a period no more than five (5) working-days from the reception of the Resolution.
Advantages resulting from Filing Infringement Actions as the one above outlined
.- Infringers are sanctioned with a heavy fine for violating the trademark rights of a third party.
.- Marketplace is corrected since the infringers are not going to trade pirate products, so the consumers will not be damaged buying counterfeit goods and will buy original merchandise from the real owner of a registered trademark.
|
Counterfeit Valves under the mark "CRANE"
|
Confiscation of the Counterfeit Merchandise |
- Entrepreneurs, who own a registered trademark, will be benefited since a dealer or trader will be discouraged to purchase counterfeit merchandise for avoiding the damage resulting from an infringement action, instead they will purchase original goods from the brand name's real owner or its licensee.
- Entrepreneurs will realize about the importance of having a trademark duly registered and the possibility of starting an infringement action if their rights were being damaged by a third party. - Infringers face the payment of the remedies and costs involved in an infringement action.
.- Bogus merchandise is definitely confiscated and destroyed later on. |
3. Estudio Delion, representing the well-known company Araya Industrial Co. Ltd., from Japan, which a manufacturer of wheels and motorcycle spare parts
By means of Application No.103-2003/CCD of September 18, 2003, our law firm filed an action before the Commission of Defense of the Unfair Competition on behalf of our client Araya Industrial Co. Ltd., from Japan against Motorrepuestos Señor Cautivo E.I.R.L. from Peru. The First Administrative Instance, that is the Commission of Defense of the Unfair Competition as well as the Court of Defense of the Competition and Intellectual Property - Defense of the Competition Division through the Resolution No.132-2003 of December 4, 2003 declared FOUNDED this action and therefore punished Motorrepuestos Señor Cautivo E.I.R.L., as follows:
First: PUNISH to Motorrepuestos Señor Cautivo E.I.R.L. with a fine equivalent to 15 tax units (US$15,000 aproximately).
Second: Record the accused in the transgressor register.
Third: ORDER the DEFINITIVE and IMMEDIATE CESSATION of the trade of products, which have been the object of this action.
Fourth: IMMOBILIZE all the compromising products as a complemetary measure.
Fifth: Order the DEFINITIVE CONFISCATION of the counterfeited rims for bycicle tires under the trademark ARAYA.
4. Estudio
Delion representing the famous company Gianni Versace S.p.A. from
Italy.
This
case is about an application for registration of the trademark
"GIANNI VERSACE", on behalf of our client Gianni
Versace S.p.A. under application No.245796-94 class 25, which
covers: Clothing, footwear and headgear; which was denied by the
First Administrative Instance by means of the Resolution No.987-96-INDECOPI/OSD
of January 25, 1996, because it was registered the similar one
VERSAGE. The Second Administrative Instance of the Court of Defense
of the Competition and Intellectual Property by means of the Resolution
No.221-1999/TPI of February 17, 1999, granted the registration
of the famous trademark "GIANNI VERSACE", on
behalf of our client Gianni Versace S.p.A., based on the
following:
1.
Notoriety of the trademark GIANNI VERSACE and its good
reputation worldwide based on its wide advertisement and millionaire
amounts of sales.
2.
Application of the Article 7 of Interamerican Convention of Trademark
and Commercial Protection of Washington of 1929, because the proofs
filed induced to believe (proofs of inducement) that the applicant
of trademark VERSAGE knew the mark GIANNI VERSACE
due to the fame and good reputation of this last one; this kind
of bad faith is known in the trademark doctrine as "copia
servil".
5. Estudio
Delion, representing the prestigious company Gordon & Rena
Merchant Pty. Ltd. (now GSM (Operations) Pty. Ltd.), owner of
the worldwide known trademark "BILLABONG".
This
case is a Nullity action filed by our Law Firm on behalf of Gordon
& Rena Merchant Pty. Ltd. under application No.145205-88,
based on the notoriety of our client's trademark "BILLABONG",
because an unknown third party, namely Bahia Trading S.A. from
Peru, had registered this trademark on its behalf in the international
class 25.
Nullity
was stated founded by the First Administrative Instance by means
of the Resolution No.082342 of August 5, 1991; said Resolution
was based on the following:
1.
Evident bad faith from Bahia Trading S.A., who wanted to take
advantage of the good reputation and fame of a well-known trademark,
such as "BILLABONG".
2.
Wide advertisement, and therefore, the great knowledge of the
good reputation and quality of the goods covered under trademark
"BILLABONG" by the consumers.
3.
Millionaire amounts of sales of trademark "BILLABONG",
which showed its fame and recognition not only in Peru, but worldwide.
6.
Estudio Delion, representing to Royal Bank of Canada from Canada vs. Seguros La Fenix Peruana from Peru.
This case is a Cancellation Action against the trademark "ROYAL", in International Class 36 which covers: insurance; financial affairs; monetary affairs; real estate affairs, of our client Royal Bank of Canada; this Cancellation was filed by Seguros La Fénix Peruana based on a supposed non-use of our client's trademark.
Resolution of the First Administrative Instance No.12404-1999/OSS-INDECOPI of November 11, 1999 stated founded the Cancellation, but the Second Administrative Instance of the Court of Defense of the Competition and Intellectual Property (INDECOPI) by means of the Resolution No.577-2000/TPI-INDECOPI of June 1, 2000 repealed the Resolution issued by the First Instance; said Resolution is an important legal precedent, which clarifies the following concepts:
1. Banks do not need to have commercial premises in Peru in order to be able to use a Service-Mark, in this case, Royal Bank of Canada in Peru, because when it is spoken about Banks of Second Floor Development (namely banks that provide services and effect operations in a corporate level), they effect their operations by means of international business rendering their services to other Banks or Corporations.
2. It is possible to use a mark in such a form that could be different than the form in which was registered, but only in details or elements that do not change its distinctive character. In this case, it was proved the use of mark "ROYAL Bank of Canada", which only contains a variation of secondary aspects of the mark "ROYAL".
3. Word BANK is a generic in the international class 36, in spite of the fact, that this is a word in English language. Regarding the phrase OF CANADA, it constitutes a geographic indication; both of them are for such reasons impossible to be registered by themselves.
7. Estudio Delion (formerly World Patents S.R.L.) vs. the Peruvian State
On May 9, 2000, our Law Firm filed an Action of Non-Compliance before the Andean Community of Nations ("Comunidad Andina de Naciones") against the Peruvian State, due to the fact that the National Institute of Defense of the Competition and Intellectual Property INDECOPI - (Instituto Nacional de Defensa de la Competencia y de la Propiedad Intelectual) was failing to fulfill the Article 93 of the Decision 344 of the Cartagena Agreement, because they were requiring to prove "a real and current economical interest of entering into the Peruvian market under the trademark on which is based the Opposition", this was a requisite which was not foreseen in the aforesaid article; because, the only requirement to file an opposition based on the Andean Community is that the opposing mark is registered or it had been requested previously in any of the member countries of the Andean Community.
For the reason above mentioned, on January 22, 2002 The Andean Community of Nations ratified the Decision of Non-Fulfillment No.19-2000 which was issued by the General Secretariat of this Organization on behalf of World Patents S.R.L. (now Estudio Delion S.R.L.), taking the following decisions:
First: The Andean Community of Nations declared the Non-Fulfillment of the article 4 of the Treaty of the Court Creation and the article 93 of the Decision 344 of the Commision by the Peruvian State due to the fact that they had demanded additional requirements in the opposition, which had not been established in said rule.
Second: Sentence the Peruvian State to pay all the expenses incurred, because of the present Non-Fulfillment action, which was stated founded by the Court, in accordance with the article 90 of the Statute of Justice Court of the Andean Community.
