Nullity of a trademark in Peru
- 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 about a nullity of a trademark in Peru, an 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.
Those signs may not be registered as marks whose use in trade would unduly harm a third-party right, especially where:…(h) they constitute a reproduction, imitation, translation, transliteration or transcription of all or part of a well-known distinctive sign the owner of which is a third party, regardless of the goods or services to which the sign is applied, where their use would be liable to create a risk of confusion or association with that third party or with his goods or services, constitute misappropriation of the prestige of the sign or dilution of its distinctive power or commercial or advertising value.»
- 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 «.
- Wide advertisement, and therefore, the great knowledge of the good reputation and quality of the goods covered under trademark «BILLABONG » by the consumers.
- Millionaire amounts of sales of trademark «BILLABONG«, which showed its fame and recognition not only in Peru, but worldwide.
*Decision 486—Common Provisions on Industrial Property, TITLE VI MARKS Chapter I Requirements for the Registration of Marks 136 (h).
** Well-known marks: a famous or well-known mark is a trademark that, considering its widespread reputation or recognition, may enjoy broader protection than an ordinary mark. Source: INTA