Cancellation of trademark ROYAL in Peru
- ESTUDIO DELION S.R.L., representing the Royal Bank of Canada (CANADA) versus Compañía de Seguros la Fenix Peruana (PERÚ)"
*Trademark cancellation: Article 165 of Decision 486 – Common Regime on Industrial Property, establishes that, at the request of an interested person, the Competent National Office will cancel the registration of a trademark that without justified reason had not been used in Peru or in any of the member countries of the Andean community, during the three consecutive years preceding the date on which the cancellation action was initiated.
Case: cancellation of a trademark in Peru
This case is a Cancellation Action against the trademark «ROYAL», in International Class 36 which covers: insurance; financial affairs; monetary affairs; real estate affairs, of our client Royal Bank of Canada ; this Cancellation was filed by Seguros La Fénix Peruana based on a supposed non-use of our client’s trademark.
Resolution of the First Administrative Instance No.12404-1999/OSS-INDECOPI of November 11, 1999, stated founded the Cancellation, but the Second Administrative Instance of the Court of Defense of the Competition and Intellectual Property (INDECOPI) by the Resolution No.577-2000/TPI-INDECOPI of June 1, 2000, repealed the Resolution issued by the First Instance; said Resolution is an important legal precedent, which clarifies the following concepts:
Grounds for cancel the trademark
- Banks do not need to have commercial premises in Peru to be able to use a Service-Mark, in this case, Royal Bank of Canada in Peru because when it is spoken about Banks of Second Floor Development (namely banks that provide services and effect operations in a corporate level), they effect their operations employing international business rendering their services to other Banks or Corporations.
- It is possible to use a mark in such a form that could be different from the form in which it was registered, but only in details or elements that do not change its distinctive character. In this case, it was proved the use of mark «ROYAL Bank of Canada», which only contains a variation of secondary aspects of the mark «ROYAL».
- Word BANK is a generic in the international class 36 despite the fact, that this is a word in English language. Regarding the phrase OF CANADA, it constitutes a geographic indication; both of them are for such reasons impossible to be registered by themselves
* Source: Trademark cancellation definition was taken from the following document which was translated from Spanish into English «they dictate guidelines for the cancellation of trademark registration» (El Peruano, March 14, 2020).