PERU: WHAT CONSTITUTES TRADEMARK USE?
ESTUDIO DELION since 1984
"This makes it impossible to start counting the three years of non-use of the mark in order to request its cancellation, and therefore the trademark is effectively removed from the Peruvian market"
This article about trademark use considers the criteria used by the Peruvian trademark office to resolve cancellation for the non-use of trademarks.
Within the scope of Decision 486 of the Andean Community, in Peru, a trademark might be cancelled when it has not been used for three years after receiving a certificate of approval (including the notice of resolution which grants the brand registration).
But there are problems with the administration’s interpretation of when such notice is received. The certificate must be physically collected at the registration division of the Peruvian trademark office for the notification that grants the mark to be deemed to be carried out.
This interpretation means that an applicant might pick up the certificate many months or even years after the issue of the notice or even never take the notification. This makes it impossible to start counting the three years of non-use of the mark to request its cancellation. Therefore the trademark is effectively removed from the market, avoiding its commercialization by interested third parties.
We hope that this approach will change so that the arrival date of the certificate at its box at the registration division becomes the beginning of the period of three years.
interpretation of Article 166 of the Decision 486 in a trademark use
Regarding the administration’s interpretation of Article 166 of the Decision 486 on the proper use of a brand, experience derived from the resolutions show that the Peruvian administration is too strict about mixed or figurative brands, requiring evidence which proves the use of the trademark in precisely the way that it is is was granted.
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Wordmarks do not cause as much trouble as figurative marks because it is necessary only to demonstrate the use of the word.
However, the use of the wordmark cannot merely be asserted. It must appear in documents that prove the commercial use of the mark in the territory of Peru or another country of the Andean Community. The jurisprudence mentions the most important proof is sales invoices, which can be supported with publicity, revenue and expense reports, all of which must refer to the brand.
In addition, invoices must contain specific references to the product to which the mark is applied to establish that it is used for the products listed on the certificate concerned.
Likewise, they should be in numbers that prove the product is on the market in reasonable quantities.
figurative and mixed marks
In the case of figurative and mixed marks, the documentation must contain them. Since invoices are highly impractical to have suggestive marks, usually just the word appears, the jurisprudence shows that the mixed mark is commonly used as a watermark on the invoice. Regrettably, the big problem with this is the sales of products with different brands—it would not make any sense to have just one mark in the background. In these cases, it is recommended to mention the product code in the description and attach documentation where these codes appear. Generally, these are catalogues where the mark appears as it was registered.
Only minor variations of the mixed trademark are allowed to ensure the brand will be used in a way closest to how it has been granted. For some, these criteria would prevent traders from comfortably using their marks, but we believe it helps to respect trademark rights, punishing those who are not diligent and do not use the sign in the way it has been granted. We believe that this is a proper curb for rights owners and benefits market players.
This article has been published: What Constitutes «Use»? – Peru, HG org, legal resources
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