Introduction
Protection of unconventional trademarks
Protection of unconventional trademarks in Peru
Registration of unconventional trademarks in Peru
"Conventional" trademarks as those that are expressed by words, numbers, images or symbols – that is, they can be perceived only by sight. "Unconventional" trademarks, on the other hand, can be distinguished by any of the five senses and are expressed through unusual methods, such as an experience used as part of a marketing strategy in order to create an impression among consumers, thus orienting their preferences towards a certain product or service.
Unconventional trademarks can be:
- holographs – three-dimensional images microscopically recorded on photosensitive film by means of a laser beam in such a way that when viewed from different perspectives, the image is reflected in three dimensions (eg, holograms used for security purposes on credit cards);
- sound marks – any sound that the consumer associates with a particular brand (eg, the unique roar of the MGM lion);
- olfactory marks – scents that remind consumers of products (eg, the smell of Play-Doh plasticine); and
- commercial images – images that contain a set of unique characteristics which protect the identity of a product (eg, its colour, shape or packaging).
Protection of unconventional trademarks
Unconventional trademarks have acquired a certain degree of legal recognition over time. Internationally, the Singapore Treaty on the Law of Trademarks – to which Peru acceded on 27 September 2018 – creates a framework of protection for such brands and provides each member country the freedom to register all kinds of trademarks that it considers valid. The Treaty indicates in its regulations the way in which the interested parties must request the representation of some of the most frequent unconventional trademarks.
Protection of unconventional trademarks in Peru
On a national level, Andean Decision 486 expressly considers some unconventional marks, such as colors, sounds, olfactory marks and three-dimensional marks. However, it is relatively ambiguous with respect to other types of signs that can be recognised as trademarks (see subsection g):
For the purposes of this regime, any sign that is capable of distinguishing products or services in the market shall constitute a trademark. Signs capable of graphic representation may be registered as trademarks. The nature of the product or service to which a trademark is to be applied will in no case be an obstacle to its registration. The following signs may constitute trademarks, among others:
a) the words or combination of words;
b) images, figures, symbols, graphics, logos, monograms, portraits, labels, emblems and shields;
c) sounds and smells;
d) letters and numbers;
e) a color delimited by a shape, or a combination of colors;
f) the shape of the products, their containers or wrappings;
g) any combination of the signs or means indicated in the previous sections.
Registration of unconventional trademarks in Peru
The Court of Justice of the Andean Community has also set out the essential requirements for the registration of unconventional trademarks, indicated in the aforementioned decision. These are:
- the susceptibility of graphic representation, which is the ability of a sign to be described or reproduced in words, images, formulae or another form (ie, a form perceptible to be captured by the consuming public); and
- distinctiveness, which is the ability of a sign to individualise, identify and differentiate products or services in the market, making it possible for the consumer or user to select them.
In Peru, sound marks are the most frequently used type of unconventional trademark. This may be because, unlike olfactory and taste marks, this type of brand has clearer criteria and it is easier to comply with the requirement of graphic representation.
For example, on 24 January 2014, the directorate of distinctive signs of the National Institute for the Defence of Competition and Protection of Intellectual Property denied the registration of a sound mark requested by ARCORS.AIC. It stated as follows:(1)
in relation to graphic representation, this is a formal requirement for the purposes of advertising the application and registration. Thus, in the case of sound marks, they can be represented through a pentagram or a spectrogram
In Peru, unconventional trademarks have not yet been widely seen. However, over the years, it is expected that large companies will use unconventional trademarks to connect with consumers in a more efficient way, based on their preferences and the impact of what they can see, hear or feel.
For further information on this topic please contact Vicente Campodonico at OMC Abogados & Consultores by telephone (+511 502 6467) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.
Endnotes