Well-known mark in Peru
-This case is about an application for registration of the well-known mark» GIANNI VERSACE «, on behalf of our client Gianni Versace S.p.A. under application No.245796-94 class 25, which covers: Clothing, footwear and headgear; which was denied by the First Administrative Instance through the Resolution No.987-96-INDECOPI/OSD of January 25, 1996 because it was already registered the similar one trademark VERSAGE.
The Second Administrative Instance of the Court of Defense of the Competition and Intellectual Property by the Resolution No.221-1999/TPI of February 17, 1999, granted the registration of the well-known mark» GIANNI VERSACE «, on behalf of our client Gianni Versace S.p.A. and the nullity of the trademark VERSAGE.
Grounds to proceed with the registration of the Gianni Versace’s trademark and the nullity of the Versage brand
- **The recognition of GIANNI VERSACE as a well-known mark based on its wide advertisement and millionaire amounts of sales.
- ***Application of the Article 7 of Inter-American Convention of Trademark and Commercial Protection of Washington of 1929 because the proofs filed induced to believe (proofs of inducement) that the applicant of trademark VERSAGE knew the mark GIANNI VERSACE due to the fame and good reputation of this last one; this kind of bad faith is known in the trademark doctrine as «copia servil».
** 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
***article 7- Inter-American Convention for Trademark and Commercial Protection of Washington 1929
Any owner of mark protected in one of the Contracting States in accordance with its domestic law, who may know that some other person is using or applying to register or deposit an interfering mark in any other of the Contracting States, shall have the right to oppose such use, registration or deposit and shall have the right to employ all legal means, procedure or recourse provided in the country in which such interfering mark is being used or where its registration or deposit is being sought, and upon proof that the person who is using such mark, or applying to register or deposit it, had knowledge of the existence and continuous use in any of the Contracting States of the mark on which opposition is based upon goods of the same class the opposer may claim for himself the preferential right to use such mark in the country where the opposition is made or priority to register or deposit it in such country, upon compliance with the requirements established by the domestic legislation in such country and by this Convention.