NEW AVENUES FOR PERUVIAN TRADEMARK PROTECTION
"Thanks to new dispositions that allow interaction between the complainant and the Public Ministry, a new door has opened to facilitate action against piracy"
Peruvian law provides two ways to protect against the misuse of registered trademarks. The first is the administrative channel through infringement actions filed before Peru’s patent and trademark office (INDECOPI), based on Decision 486 of the Andean Community and Legislative Decree No. 1075. The second is the judicial channel through the laws against the infringement of industrial property rights contained in the Penal Code.
To date, the administrative channel is the most used because of the speed of procedures and the possibility of finding an agreement to repair as far as possible the interests of injured trademark owners because it contemplates the option that at the conciliation hearing, the infringer would pay some financial compensation for its actions.
In the administrative channel, no fraud is needed to constitute an infringement. It must be demonstrated that the accused is responsible for the relevant act of commerce to prove administrative responsibility.
In the judicial channel, on the contrary, fraud of some sort is required to establish the author’s responsibility. This is the main difference between the two channels. The infringer’s intention to break the law must be proved when it comes to the unauthorized use of a trademark owned by a third party.
During the exercise of legal actions before the judicial channel, we have counted on the valuable support of the members of the Public Ministry and the National Police of Peru to carry out seizures of counterfeits. This has happened in the specific case of a client dedicated to producing helmets for mining and construction use. It has registered an industrial design and a three-dimensional mark consisting of a particular and distinctive helmet shape. A third party reproducing these helmets without authorization for sale is an important market in Lima.
After filing the complaint, we had help from the Public Ministry and the National Police (which supports the Public Ministry in this type of investigation) to conduct the corresponding inspection proceedings. During this specific intervention, where the helmets were manufactured, nearly 5,000 helmets were seized, plus two matrices for manufacturing models, which were virtually a carbon copy of the registered design and trademark.
This quick and effective action has allowed us to increase the scope of protection of our client’s rights. In the past, the judicial channel was less effective than the administrative channel due to delays in the procedural system, which unfortunately led to a considerable caseload that prevented quick action.
Thanks to new dispositions that allow interaction between the complainant and the Public Ministry, a new door has opened to facilitate action against piracy. This is a clear cause for celebration.