Newsletter No. 27 

Issued: July 2008

The Peruvian Trademark Office-INDECOPI carrying out a right interpretation on the industrial property regulations and mainly applying the common sense, granted priority right to a Japanese application filed on August 11, rather than a Peruvian application filed the same day.

Said decision was based on "the difference between the time in Japan and the time in Peru ", since the Japanese application was filed on August 11, while the Peruvian application was filed on August 11 at 12:33 p.m. that is at 2:33 a.m. of August 12 in Japan, because Japan is 14 hours ahead of Peru.

This important initiative of the Peruvian Trademark Office sets a precedent with a criterion which considers the REAL TIME or REAL HOUR as the essential element that decides which trademark application was filed first, that is, the application of the principle “first in the time, first in the right”

In consequence, we congratulate the Peruvian Trademark Office for this practical criterion which clarifies the “rules of game” concerning the registration of trademark.

Regulations and laws relating to this case :

• Paris Convention article 4° : any person who has duly filed an application of registration of a trademark, in one of the countries of the Union , shall enjoy, for the purpose of filing in the other countries, a right of priority during the six months after the application filing date of the first application.
• Literal b) article 9° Decision 486 of the Andean Community: The right of priority may be based on a previous application filed in a Member Country. In that case, it must be understood that the second application was filed in the same date of the first one.
• Article 6° legislative decree Nº 823- Peruvian Industrial Property Law: the precedent for industrial property rights shall be determined by the date and hour of the filing of the application for registration.

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Newsletter No. 26 

Issued: June 2008

The free trade agreement between Peru and U.S.A. came into force in December 4, 2007.

Regarding Intellectual Property, the Agreement sets forth that the parties must adhere to some international treaties at different times. In this sense, the parties must accede to the following treaties as of the effective date of this agreement.

•  Convention Relating to the Distribution of Programme–Carrying Signals Transmitted by Satellite (1974).

•  Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977, amended in 1980).

•  WIPO Copyright Treaty (WCT)

•  WIPO Performances and Phonograms Treaty (WPPT) (1996).

The parties shall ratify or accede to the following agreements by January 1, 2008, or the date of entry into force of this Agreement, whichever comes first:

•  Patent Cooperation Treaty (1970), as amended in 1979 .

•  Trademark Law Treaty (1994).

•  International Union for the Protection of New Varieties of Plants (UPOV) (1991).

Likewise, the parties shall make reasonable efforts to ratify or accede to the following agreements:

•  The Patent Law Treaty (2000)

•  The Hague Agreement Concerning the International Registration of Industrial Designs (1999).

•  The Protocol related to the Madrid Agreement Concerning the International Registration of Marks (1989).

It must be understood that the parties involved in the FTA at least should discuss the adherence to the particular treaties mentioned in (3) in their congresses with “all reasonable efforts” In this sense, the Peruvian Congress will fulfil such requirement if it discusses the respective adherences to the last group of Treaties in its Congress with “all reasonable efforts”.

At present said discussion has not been held because it has passed a short time from the approval of the FTA by the US Congress. We believe the discussion regarding the adherence to the treaties will take place in the next few months.

It is worthy to point out that the Peruvian Congress approved a law on December 19, 2007 which empowers its the Executive authorities to legislate on the implementation of the FTA. In this way, it is sought that the Executive authorities make the necessary laws within a term of 180 days, regarding several topics, such as:

• Trade facilitation.
• Justice administration improvement in terms of commerce.
• Promotion of the private investment.
• Promotion of the technology innovation, employment, as well as medium, small and micro businesses, among others.

Contrary to other FTAs signed by the USA , in which the respective implementation has lasted up to two (2) years, the Peruvian government is trying to speed up the implementation process and its goal is to finish it no later than January 2009 .

Accordingly, some amendments have been adapted to our domestic law. For this purpose, work groups have been formed; one group for each chapter of the Agreement (access to the market, services, investments, etc.). It is expected that such amendments or the commitment to amend the current regulations in a way that can fulfil the FTA requirements be ready by or on June 29, 2008 , since this is the date in which the term of delegation of power to the Executive authorities for legislating in connection with this issue expires.

The following are the main issues, in which the amendment of our regulations must be and are being made:

Intellectual Property : The adaptation of the local regulations to the points set forth in chapter 6 of the treaty is in process. These amendments or the agreements adopted for the fulfilment of the treaty must be determined on the same maturity date of the other topics. The delegation of regulating powers from the legislative to the executive terminates on such date. No amendment has been approved to this date.

Adjustment of Customs Procedures : We can mention the topic of anticipated resolutions:

•  resolutions related to tariffs,

•  origin regulations and others that foreign customs authorities must issue before carrying out a shipment);

•  quick exports (the quick export campaign, which allows small and medium-sized companies to export for a certain amount of money, making exports easy);

•  Cooperation.

These topics can be realized taking into consideration the Foreign Trade Facilitation Law (June 2007), which still needs to be regulated. This regulation contributes to the feasibility of the Agreement as it makes it possible the elimination of barriers that obstruct the exchange of goods and services from and to the country, thus facilitating integration.

•  Environment

A meeting between the Foreign Trade and Tourism Minister, Mercedes Aráoz, and the representative of the Unites States in commercial matters, Susan Schwabb regarding the process of adaptation to the agreement will be held in May. .

Finally, it is expected that the FTA can be fully implemented by 2009 .

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Newsletter No. 25 

Issued: March 2008

When it was published the Directive N ° 02-2001/TRI-INDECOPI on January 24, 2002, this provided that the Court of INDECOPI is the competent entity in charge of stating the nullity of an administrative act issued by any of the INDECOPI`s Commissions and Offices to its own initiative or by request of a third party, when such an act is included in any ground of nullity in accordance with the INDECOPI`s Law of General Administrative Procedure.

The possibility that a Nullity can be approved because of the authority's initiative makes INDECOPI become a guarantor of the legality of its acts because it can amend even by itself its administrative acts in order for them to fulfill all the legal requirements to achieve their aims.

It is worth to point out that when the Distinctive Signs Office grants the registration of a trademark, it is supposed that there is not any likelihood of confusion with any of the trademarks previously registered in our country. However, sometimes it happens that the likelihood of confusion exam has not been properly done, consequently there is the possibility to find out trademarks previously registered, which are very similar to the applied for trademark, and as a result the resolution by means of which had been granted the registration can be stated null.

The above-mentioned fact can bring negative consequences, especially economical damages for the users of the Peruvian intellectual property system since they start investing in the trademarks already registered on their behalf believing in the rights associated to them and suddenly they realize these brand names can be nullified due to a mistake made by the Trademark Office.

Taking this into account, the Court of INDECOPI is currently interpreting the Directive N° 02-2001/TRI-INDECOPI in a suitable and restricted way, since it is only declared the nullity by its own initiative when the Office of Distinctive Signs has made a big mistake and as a result the coexistence between trademarks is unfeasible as it is obvious the consumers could be confused. For instance: the Resolution no. 0596-2008/TPI-INDECOPI nullified the previous Resolution no. 1394-2007/OSD-INDECOPI dated August 24, 2007, which granted the registration of the brand name XCEL GAS CO. PARASUCO, in class 25 on behalf of Preparations Dwells Cord Division. The nullity was approved because the Court realized that the trademarks XCEL SKATEDUDE and XCEL were previously registered in the name of a third party in the same class.

 

*INDECOPI= National Institute for the Defense of the Competition and the Protection of the Intellectual Property

 

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From December 8 th , 2007 , it is in force the registration of the second level domains (eg. xxxxx.pe), apart from being shorter, easier to remember, the new domains “.pe” are faster to prosecute and can be traded by any one who wishes to do so.

Additionally to the aforesaid advantages, the new domains “xxxxx.pe” provide the users other benefits, such as:

• The chance of using special characters like: á, é, í, ó, ú ñ, ü.
• The removal of the current restrictions on registrations of Peruvian toponyms and surnames.
• The registration and payment of a domain name via on-line.
• The elimination of the 10 days period for filing an opposition against a domain name.

The people who think their rights are affected in connection with the registration of a “.pe” domain can resolve their conflicts by means of the application of the new Policies on Disputes Resolution.

These new Policies will resolve the disputes arisen from the use of domain names and brand names, under the following circumstances:

1. The domain name is identical or confusingly similar to a trademark or service mark previously registered or applied for in Peru and over which the plaintiff has rights;
2. The applicant of a domain name does not have genuine rights or interests in connection with the relevant domain name; and
3. The domain name is used in bath faith.

Finally, the users of a third level domain (eg. xxxxx.com.pe) enjoys a priority right until December 7 th , 2007 to reserve their second level domain xxxxx.pe in respect to any interested third party.

 

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Newsletter No. 2 3 

Issued: October 2007

The Article 147 of the Decision 486 – Common Regimen regarding Industrial Property of the Andean Community states that it is possible that the owner of a trademark previously registered or applied for in any member country of said community of nations, namely, Colombia , Ecuador , Colombia or Peru, can file an opposition against a trademark application deposited in another member country of this bloc. The aforesaid article points out that the relevant opposition must be against a trademark application without mentioning the possibility of an opposition against a Trade Name. This means that this regulation does not say nothing about the chance that the owner of a trademark previously registered or applied for in an Andean Community country can or cannot opposes an application for a Trade Name in any other member country of the Andean Community.

Considering the purpose of the Article 147 is to look for the INTEGRATION, that is, it is intended that the registrations of trademarks have the same owners, so it is allowed the well-known ANDEAN OPPOSTION; we think if an individual or a business owns a priority trademark application in any member country of the Andean Community, and it is applied for the registration of a Trade Name, which is completely the same, in another member country, such an opposition should be stated “founded”. It is true this regulation stipulates nothing about the Trade Name applications, nevertheless, if the purpose of the aforementioned Article 147 is the INTEGRATION and for that reason it is allowed oppositions against trademark applications, as a matter of coherence, it should be let the same against Trade Names, since a Trade Name covers trading activities that can cause confusion with a Trademark previously registered or applied for. Of course, the opponent must always take into account that it is essential its trademark application/registration has been filed before the date claimed as first use within the market by the Trade Name's applicant.

 

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Newsletter No. 2 2 

Issued: July 2007

Newsletter No. 21

Issued: February 2007

In 2005 it was issued the Resolution No. 1183-2005/TPI-INDECOPI, the same that is considered mandatory jurisprudence and by means of which was established the following criteria used to determine a Cancellation for Non Use of a trademark:

First: the regulation has a compulsory character, that is, the authority is obliged to cancel in a partial way a trademark registration in connection with the products or services which are not being used.

Therefore, the regulation has an imperative character and it is a duty of the administrative authority to cancel in a partial way a registration although this has not been applied for by the plaintiff.

Second: regarding the identity or similarity of the goods or services, it should be evaluated the following:

•  Whether it has been proved the use of a mark in connection with an identical product or service to one specifically detailed in the list of goods or services covered by this mark;

•  Whether it has been proved the use of a product or service that is not within the list of products or services covered by the trademark registered, it must be verified the similarity of the products or services detailed in the list, or in any event, if said product or service is included in the type of products or services covered by the mark.

As result, the mark must not be cancelled if the use of the related products has been proved since it is considered that the relevant market of the similar products and the market of the ones expressly detailed in the list covered by the mark are closely related.

However and in spite of the fact that there is Compulsory Jurisprudence, the INDECOPI´s Court has issued the Resolution No. 0289-2007/TPI-INDECOPI, which establishes a totally different criterion, this new Resolution states the following:

“The intention of the regulation – according to the Court's criterion – is not to maintain a registration of a trademark in connection with the products or services, the use thereof is proved and moreover regarding “their similar ones”, ……... The Cancellation of a trademark has the purpose of reflecting in the most exact way the reality of the use of the mark in the registration that supports the same. In this sense, if it is maintained a registration of a trademark regarding the products or services for which are proved the use in an effective way within the market and, moreover, for their similarities, it would contravene the aim of the cancellation action, as well as extending the list of goods or services of the trademark registration, causing a breach to the dispositions included in the article 139 of the Decision 486.

Consequently, if it is only proved the use of a mark regarding any of the assumptions above described, it will be proceeded to cancel its registration, such as the cases in which it is not filed any proofs that show the use of the mark.

Finally, it is convenient to point out that the fact that it is cancelled in a partial way the registration of a mark does not determine that a third party can obtain in an automatically way the registration of an identical or similar trademark covering the products or services that were the object of the cancellation since that circumstance must be evaluated by the authority within the respective trademark registration procedure”.

We think it is regrettable that INDECOPI´s Court had issued this Resolution since it is not stated in a clear way why they are contradicting or leaving without effect a previous Resolution of the Court that is considered a mandatory observance precedent.

However, the aforesaid is not the worst, since it is incredible that the Resolution contradict itself, because first it approves the cancellation of a trademark in connection with very similar products, and then it states that the person who filed the cancellation action and was able to cancel the trademark in connection with some products would have the possibility of applying for the registration of this in connection with the products that are not being used, but that fact does not guarantee the approval of the trademark since the new application would be analyzed by the respective authority.

In order to illustrate the aforesaid, it is set the following example: a person applies for the cancellation of the trademark “A” which covers: shoes and articles of clothing, the owner proves the use only regarding the articles of clothing, therefore, the mark will be cancelled in connection with shoes. Then, the person who applied for the cancellation requests the registration of the mark only regarding shoes, however, and although there is a previous sentence in this sense, the most probable is that the authority does not let the registration, since shoes and articles of clothing are closely related goods and this is a cause of non-registration.

In fact we do not understand this Resolution since it does not have any sense to cancel a trademark regarding some products, and then the owner of the trademark cancelled can avoid the registration of the same in a partial way, that is, in connection with the products the trademark was cancelled, by the plaintiff of the cancellation action.

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Newsletter No. 20

Issued: January 2007

As it is known, Venezuela gave a notice of termination of the Cartagena Agreement and therefore, this country is no more a Member of the Andean Community.

In this sense, the professionals involved in Intellectual Property had the doubt about how would be resolved the pending cases connected to Andean oppositions based on a Venezuelan registration, which were filed before Venezuela 's resignation from said Agreement.

On June 27, 2006, the Justice Court of the Andean Community resolved the Process 145-Al-2005 regarding an action of non-compliance filed against the Republic of Venezuela, in said Resolution the Court inhibited from recognizing the action of non-compliance1, since Venezuela was no more a member of the Andean Community from April 22, 2006 (which is the date of Venezuela's resignation).

Said way of resolving is being applied by the Peruvian Trademark Office for Andean opposition cases based on a Venezuelan trademark, which were filed before Venezuela resigned from the Andean Agreement, that is, before April 22, 2006 . In this connection we think that in order to grant legal certainty to the community system and although the sentence above mentioned follows a certain logic it should be imposed a sanction to Venezuela , because this country did not fulfill an obligation while it was a member of the Cartagena Agreement.

Therefore, the one affected and promoter of the non-fulfillment action should have the right of a compensation for the period from the moment Venezuela resigned from being a member of the Agreement until the non-compliance.

In accordance with the aforesaid, the Peruvian Trademark Office should resolve in connection with the existing facts and rights at the moment of filing the opposition and not according to the existing ones at the time the opposition is resolved because this is an attempt to legal certainty, in other words, it harms the cases that are resolved after the resignation by Venezuela. For instance, it could happen that if two oppositions were filed the same date based on a Venezuelan registration or application against two different applications and one is resolved before April 22, 2006 and the other one after April 22, 2006, the one resolved before would be stated founded while the one resolved after said date would be stated unfounded.

In summary, we believe that the most suitable way to resolve such cases would be that an opposition filed before April 22, 2006 be stated founded since by that time Venezuela enjoyed the privileges and duties arisen from the fact of being a member of the Andean Community.

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1 Effects of a sentence of non-compliance are:

First: Obligate the country that does not fulfill its duties to adopt the necessary measures to comply with the obligation of doing or not imposed by the sentence.

Second: A non-compliance sentence is a legal and sufficient title in order for the plaintiff can request the corresponding compensation for damages.

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Newsletter No. 19

Issued: September 2006

On August 11, 200 6 it was issued the Resolution No. 1140-2006/TPI - INDECOPI, which revoked the Resolution No. 5444-2006/OSD-INDECOPI, and consequently it was stated Unfounded the Cancellation Action for Non-Use filed against Registration No. 31110 of trademark “ CAMBER ” and label.

Said resolution was based on the fact that there were assumptions that made suppose the trademark “ CAMBER ” and label was being traded in spite of the following facts:

•  The invoices lodged by the trademark's owner did not show the trademark “ CAMBER ”.

•  The owner filed some labels; however, said labels did not correspond to the label of the trademark “CAMBER” registered at the Peruvian Trademark Office-INDECOPI.

•  The Invoices only showed the use of the Trade Name “ CAMBER ”.

We think that the INDECOPI's Intellectual Property Tribunal has resolved this case in an inappropriate way, because the product's samples and invoices filed did not allow to verify clearly that the trademark was being used in the same way as this was registered or at least it should have proved that the sign was being used with a slight variation, which is allowed by the Peruvian Intellectual Property Law.

From our point of view, the Tribunal could have resolved this case by means of an appropriate interpretation of the rules, that is, that although it has not been proved in a convincing way the use of the trademark “CAMBER” and label, it has been showed the use of this appellation as a Trade Name, therefore, it did not have any sense to cancel a trademark for non-use , because the right to a trade name is obtained through its use and only the owner of a trade name can register it as a trademark and vice versa, and consequently even though the owner did not use the word “CAMBER” as a trademark, it was used this word as a trade name

Taking the above mentioned into account, it would not have any sense to cancel a trademark, if the company or person who cancelled such a brand name can not register it, because there is an existing previous right, which arose from the use of this as a trade name.

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Newsletter No. 18

Issued: August 2006

Last July 11 th 2006 the Peruvian National Congress enacted the General Law of Modern Technology Development, which has been passed to the Executive for its approval. Said law would open the doors to the research and trade of transgenic goods in Peru . Regarding this matter, The Peruvian Patent and Trademark Office - INDECOPI would have alerted that the issues about patents should not be considered within a law different than the one referred to industrial property and would be concerned about the possibility of opening the doors to patents referred to Peruvian native species.

As it is known a transgenic specie is obtained from a modified organism by genetic engineering, in other words it is the one obtained from an organism which has been incorporated genes from other species to for producing a desirable characteristic, for instance, take the genes of a cold-resistant animal and incorporate them into another one for its improvement. It must be taken into account that although there are great benefits of the transgenic products, such as health advantages (nourishing), preservation (or long life duration of food) and production (best use of the fertile soils, less use of pesticides), there are also potential risks of their consumption such as possible generation of resistant bacteria to some antibiotics, allergic reactions to the new resulting products in sensitive people.

Our point of view on this matter is that it should be evaluated the risks and benefit factors and considered control systems for the arrival of these kind of products within the respective law regulation.

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Newsletter No. 17

Issued: July 2006

As it is known the substantial and most important difference between a Mark and a Trade Name is that the right to a mark is acquired only through registration, while the right to a trade name is obtained through its use.

Likewise, the Legislative Decree 823 - Industrial Property Law states that only the owner of a Mark can use the same as a Trade Name and vice versa. However, the Decision 486 - Common Regimen of Industrial Property considers this situation in a different way, since it is stated in its article 192 that the holder of a Trade Name can avoid the use within the market of an identical or similar sign by a third party, when this can cause confusion or a risk of association with the owner or with their products or services.

The Distinctive Signs or Trademark Office as well as the Court of INDECOPI - Division of Intellectual Property distinguish these two juridical elements; for example, in a procedure of cancellation Action for Non-Use against a trademark it is required that the owner proves by means of bills of sale, the use of this, for that reason in the field "description" of these documents it must be mentioned the mark, if the appellation that comprises the mark appeared in the upper part of the bill of sale, these documents are not useful as proofs of use and as a result the Cancellation Action for Non Use is stated founded.

Regrettably, the aforesaid point of view used by the Trademark Office causes the following inconveniences:

First: Several times it is cancelled Marks that in fact are being used, since most bills of sale issued by the traders do not mention the brand of their products or services within the field "description".

Second: It is cancelled a trademark, in spite of the fact the use of the appellation has been proved as a Trade Name since this appears on the upper part of the invoices or bills of sale instead on the field "description".

It is true that the aforesaid bills of sale or invoices do not prove the use of the sign as a Mark, but it is also true that they prove the use of the sign as a Trade Name, so automatically it is corroborated the existence of a right, since the right to a Trade Name is obtained through its use and not through its registration.

Third: It does not have a logical or juridical sense to cancel a Mark if the person affected by this has the right to the same as a Trade Name since this person can avoid that any third parties, including the person or company that requested the cancellation, registers the appellation as a Mark or use the same within the market.

In our Law Firm, we have been witnesses of similar or identical cases to the above countless times, and finally the holder who lost the mark applies for the registration of this sign as a Trade Name and gets the right to it again, avoiding that third parties register or use the same as a Mark in the market.

The most incredible thing is that a company or person who is affected by a Cancellation Action for Non-Use at the beginning but who is the owner of the sign in question as a Trade Name prevents the registration of this as a Mark from the one who cancelled it, so said cancellation was a totally waste of time and money for the plaintiff.

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Newsletter No. 16

Issued: April 2006

By means of the amendment of the Supreme Decree No.088-2005-PCM - Unique Text of Administrative Procedures of *INDECOPI published on Monday, March 20, 2006, it has been stated that the Procedures for the Registration of the Indigenous People's Collective Knowledge related to the Biological Resources are completely free.

Said rule is seeking the Protection of the Indigenous People's Collective Knowledge by means of the registration of these in order to be protected by their owners against the disclosure, acquisition or use of such knowledge without their consent.

With the purpose of safeguarding in a practical way these rights, this regulation empowers the holders to file an infringement action, even in case it has not been infringed the right yet, but exists the imminent danger that the right could be infringed.

*INDECOPI= National Institute for the Defense of the Competition and the Protection of the Intellectual Property

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Newsletter No. 15

Issued: March 2006

The Commission of Repression of the Unfair Competition by means of Resolution No. 087-205/CCD-INDECOPI sanctioned Tiendas por Departamento RIPLEY S.A. (RIPLEY), which is a department store, for infringing the article 4 of the Legislative Decree 691- Publicity Regulations in Defence of Consumers, said article contains the Principle of Veracity - which states "advertisements must not contain neither information nor images which direct or indirectly, by omission, ambiguity or exaggeration, could mislead the consumers especially regarding the characteristics, price and sale conditions of a product".

RIPLEY was advertising synthetic footwear, as they were made of leather, this fact caused confusion among consumers and also gave this company a competitive advantage in the Peruvian market because of this false information.

Therefore, the Commission of Repression of the Unfair Competition of INDECOPI sanctioned this company, as follows:

FIRST: Fined RIPLEY US$18,000.00 approximately, which is equivalent to eighteen (18) UIT (=Tax Unit).

SECOND: Stopped the place of advertisements which mislead the consumers.

THIRD: Ordered the recordal of RIPLEY at the Register of Infringers.

FOURTH: Ordered the payment of all the remedies and costs incurred in this process to the Asociación Peruana de Consumidores y Usuarios-ASPEC(=Peruvian Association of Consumers and Users-ASPEC).

The aforesaid resolution has been ratified by the second administrative instance (Board of Appeals).

Additionally, Ripley has also been fined US$8,000.00 American Dollars, which is equivalent to eight (8) UIT(=Tax Unit), for selling jackets of "ecological leather", which in fact were jacket made of synthetic materials.

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Newsletter No. 14

Issued: February 2006

On December 30, 2005 was published the Supreme Decree No. 030-2005-PRODUCE, which regulates the Law No 28312. These two rules define the conditions by means of which a Peruvian company can use the seal of quality "Made in Peru".

One of the most important requirements is that all products, which would like to bear this Quality Certification, must obtain this in accordance with the Peruvian, foreign or international technical rule in force, which is granted by an entity of evaluation duly authorized by the Production Ministry. This requirement forces the producers who wants to use the seal Made in Peru to make or grow products under standards of minimum quality.

Moreover, these regulations impose sanctions against people who use the aforesaid seal without any authorization, that is a fine of 10 UIT ($10,000 approximately) for each infringement, as well as the competent authority could order precautionary measures, such as: the withdrawal of the products that bear the seal "made in Peru" without the respective authorization.

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Newsletter No. 13

Issued: January 2006

Resolution No. 1183-2005/TPI-INDECOPI, which is referred to a Cancellation Action for Non-Use filed by PRODUCTOS FAMILIA S.A. against the Registration No. 26408, word-mark "PETALO" of MEDIFARMA S.A., has been arranged as a Compulsory Jurisprudence, in connection with the criteria that must be considered in order to apply the third paragraph of the article 165 of the Decision 486. 

The criteria stated in the above mentioned Resolution are the following: 

First:  The rule has a compulsory character that is to say, the authority is obliged to cancel a registration partially respect to products or services whose use has not been proven. 

Therefore, this rule has an imperative character; and it is the administrative authority’s duty to cancel a registration partially, in spite of the fact that the plaintiff has not requested it. 

Second:  Regarding the identical or similar characteristic of the products or services, it must be evaluated the following: 

a)      If the use of a mark has been proved in connection with a service or product which is identical to one of those specifically detailed in the list of products or services covered by the registered mark;

b)      If the use in connection with a product or service not included in the list of products and services covered by the registered trademark has been proved, it must be verified the similarity among the products or services detailed in the list, or if said product or service is included within a group of products or services covered by the registered trademark.

 In case the use of a trademark was proved in order to cover goods or services that are not included in any of the previous assumptions, the trademark would be cancelled; because it would be proved that the use for products or services are different from the products or services for which the mark was registered. 

In our point of view, this interpretation of the rule has been correctly based by the Court of INDECOPI because the purpose of the same is to reduce the number of unnecessary trademarks registrations in the market, as a result, new applicants will be able to accede to the registration of a trademark (Functional Purpose of the Compulsory Use of a Trademark).

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Newsletter No. 12

Issued: December 2005

The Ministry of Foreign Affairs has just officially communicated that the Lisbon Agreement for the Protection of Appellations of Origin has come into force on May 16, 2005 in Peru .

 This agreement shows clearly that our country has a  policy of wide protection regarding the Intellectual Property in any of its ways.

The aim of the Agreement is to provide for the protection of appellations of origin, that is, the “geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors” (Article 2). Such names are registered by the Inter-national Bureau of WIPO in Geneva upon the request of the competent authorities of the interested contracting State. The International Bureau communicates the registration to the other contracting States. A contracting State may declare, within one year, that it cannot ensure the protection of a registered appellation. A registered appellation may not be declared to have become generic in a contracting State as long as it continues to be protected in the country of origin. (Source WIPO http://www.wipo.int/treaties/en/registration/lisbon/summary_lisbon.html

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