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Evangelista Torricelli 195 - Office No.201 - San Borja - Lima - PERU

PERUVIAN TRADEMARK IN ACTION

"In a successful infringement action, when an importer commits an infraction, it is possible to file a judicial demand, because bad faith has already been shown. This can result in a jail sentence"

Infringement actions have been filed in recent years, and the fight against counterfeit products has dramatically intensified. As representatives of brand owners in Peru, lobbying for improved IP enforcement is vital for intellectual property lawyers. Many counterfeit goods enter the Peruvian market every day. While ten years ago, it was falsified t-shirts, bags and watches, now the offenders have the technology to make all sorts of products, including medicines and spare parts for motors and aircraft.

Free trade agreement signed with the United States

However, recent events have improved the situation, thanks to the Free Trade Agreement signed with the United States of America. When the agreement was implemented on June 28, 2008, the Peruvian government issued Legislative Decree No. 1075, which brought several innovations to the field of intellectual property: it prescribed that all infringement actions concerning trademark rights must be resolved in a maximum of 180 working days, and more severe potential penalties for infringement were imposed, of up to $200,000.

Custom administration

On February 4, 2009, a legislative decree and customs resolution were published to the effect that marks registered before the Peruvian Patents and Trademark Office (INDECOPI) can be recorded before the customs administration, which will monitor imports and exports and send alerts to the original owners or their brand representatives if they suspect counterfeiting.

It is good to emphasize the efficiency of the customs administration, which in some cases manages to stop the counterfeit merchandise the same day it is detected.

There is also a role in the fight against counterfeits for an ‘overseer’ from INDECOPI, who monitors merchandise in the customs terminal. This is especially useful when the importer does not mention the brand of products in the custom form to smuggle counterfeits or use registered trademarks illegally in Peru.

Customs registration is beneficial because it allows Peruvian customs to learn about the characteristics of genuine, original products, such as the packaging, authorized distributors, distribution channels, etc. This registration is valid for a year and can be renewed every year for the same period.

Thanks to these new developments, trademark and copyright owners can now confiscate and destroy counterfeits that go through customs.

Trademark owners

We applaud the excellent initiative of some trademark owners, such as Group Schaeffer. They are interested in sending people from the company to teach Peruvian customs employees about the difference between an original product and a counterfeit by looking at codes and packing other technical specifications.

And in a successful infringement action, when an importer commits an infraction, it is possible to file a judicial demand because bad faith has already been shown. This can result in a jail sentence.

Conclusions

Finally, we have been underlining the importance of IP enforcement. A sound system needs to see trademark rights respected and transgressors punished with a high fine. This market benefits because infringers don’t sell falsified products, so consumers and trademark owners are protected. Traders are discouraged from sending counterfeits when there is vigorous IP enforcement. Business people might realize the importance of registering their trademarks and the value of infringement actions. Moreover, transgressors have to pay all the costs of an infringement action; the counterfeits are confiscated and destroyed, and the infringer’s name is recorded in the national registry of infringers. Finally, infringers may have to pay substantial damages.

Virginia C. Delion

Virginia C. Delion

Partner and Manager

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