Registration and useOwnership of marks
Who may apply for registration?
Any individual or legal entity, public or private, Peruvian or foreign, may apply for a trademark with INDECOPI. An application in the name of more than one person is possible. If the applicant has no domicile in Peru, a Peruvian representative must be appointed.Scope of trademark
What may and may not be protected and registered as a trademark?
According to the Peruvian Trademark Law (Andean Decision 486), a trademark is a distinctive sign capable of graphic representation, so that both are essential requirements for its registration.
In accordance with current legislation (articles 134 and 135 of Decision 486) and Andean Prejudicial Interpretation (Process 032-IP-2014, page 23) distinctiveness is the capacity of a sign to individualise, identify and differentiate in the market the goods or services, making it possible for consumers to request them. This is the essential characteristic that all signs should meet to be registered as a trademark.
Distinctiveness refers to the fact that a trademark cannot be confused with the goods or services it distinguishes, indicate its qualities or be confusingly similar to another registered trademark in the same field. In Peruvian legislation, the registration of evocative trademarks is allowed because such trademarks have sufficient distinctiveness.
According to article 134 of Decision 486, the following signs, among others, may constitute a trademark:
- words or combinations of words;
- pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels and emblems;
- sounds and smells;
- letters and numbers;
- a colour with borders to generate a specific shape, or a combination of colours;
- the shape of a product, its packaging or wrappings; and
- any combination of the signs or means indicated in the items above.
In Peru, the following non-traditional trademarks can be protected: olfactory, tactile and taste marks, despite not being expressly mentioned, but since the legislation contains a declarative enumeration of the signs that can constitute marks, such signs could be registered. Sounds and smells are expressly mentioned as being able to constitute trademarks. Three-dimensional trademarks are also protected.
Likewise, the legislation permits the registering of evocative signs as trademarks.
Signs that are constituted by a prefix of common use or usual particles may be also registered as trademarks provided that the other element grants it sufficient distinctiveness.
Signs in other languages that are unknown to the Peruvian consumer may also be registered as trademarks.
Paragraph (b), article 50 of Legislative Decree No. 1075 (domestic law), states the requirement of graphic representation for the non-perceptible marks. In the case of sound marks, a graphic representation is required by submitting, in the case of a melody, the stave representing it, and when dealing with other sounds, the spectrogram.
Signs that are included in the absolute and relative prohibitions related to third-party rights cannot be registered as trademarks.
Absolute prohibitions are included in article 135 of Decision 486 and are referred to as words of the language that do not fulfil the distinctive function as they mention the goods or services or a characteristic or quality thereof. That is, it is not possible to register as trademark a term of the language that is generic (name of the good), descriptive (mentioning any characteristic of the sign), or usual (in common business language).
Paragraph (b) mentions the prohibition concerning lack of inherent distinctiveness and paragraphs (i) and (j) signs that may mislead consumers.
Signs cannot be registered as trademarks if they contain a protected appellation of origin for wines and spirits (paragraph (k)) or consist of a national or foreign geographical reference that is liable to create confusion in respect of its application to products or services (paragraph (l)).
Likewise, signs reproducing or imitating heraldic elements, such as coats of arms, flags and emblems, and official signs and stamps used for the purposes of government control and guarantee and the coats of arms, flags and other emblems, initials or designations of any international organisation, without the permission of the competent authority of the state or international organisation concerned, may not be registered as trademarks (paragraph (m)).
Further, signs reproducing or imitating signs denoting conformity with technical standards may not be registered as trademarks unless such signs are applied for with the national body responsible for standards and quality requirements in member countries (paragraph (n)).
Signs reproducing, imitating or including the indication of a plant species protected in an Andean country or any other country when the application to goods or services relating to such species or its use is likely to cause confusion or a mistaken association with that variety, may also not be registered as trademarks (paragraph (o)).
Signs that are contrary to law, morality, public order or good manners may not be registered as trademarks (paragraph (p)).
Relative prohibitions to third-party rights are included in article 136 such as signs that are identical or similar to a trademark filed for registration or registered earlier by a third party, a protected trade name, label or emblem, a registered advertising slogan when use of such signs are likely to lead to confusion or mistaken association.
Signs that are similar or identical to a distinctive sign belonging to a third party may not be registered as trademarks when the applicant has been or is a representative or distributor of the owner of the protected sign and where use of the mark would result in a likelihood of confusion or mistaken association.
Likewise, signs affecting the identity or prestige of legal entities (non-profit or not, or natural persons other than the applicant or identifiable by the general public as being such a different person), particularly with regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait or caricature without consent from that person or, if deceased, the declared heirs of that person, may also not be registered as trademarks.
Further, signs that may violate the intellectual property right or copyright of a third party without consent of that party, signs consisting of the name of indigenous, African-American or local communities not filed by the community itself or without its express consent and signs consisting of a total or partial reproduction, imitation, translation, transliteration or transcription of a well-known sign belonging to a third party may not be registered as trademarks.
Article 137 states that the Trademark Office Authorities may refuse the registration of a trademark when there is sufficient reason to believe that the registration was applied for to engender an act of unfair competition.
In accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), service marks are protected in Peru (Classes 35 to 45).
Collective marks are protected under Title VIII of Decision 486 (articles 180 to 184).
On 28 August 2017, Supreme Decree No. 086-2017-PCM established a temporary regime for simplifying collective trademark registration procedures and exemption of fees for areas affected by weather events in order to boost their economic development.
On 5 September 2018, Supreme Decree No. 092-2018-PCM was published, which extends the exemption of the payment of the fee at the national level and simplification of the procedure for requesting the registration of collective marks for one year from the date of publication. This Decree is not just limited to people who are located in areas affected by weather phenomena, like Supreme Decree No. 086-2017-PCM had temporarily established, but it is applicable to all groups and associations.
Prior to the above-mentioned provisions, 222 collective marks were registered. At present, 1,568 collective marks are registered.
Certification marks are protected under Title IX of Decision No. 486 (articles 185 to 189).Unregistered trademarks
Can trademark rights be established without registration?
Trademark rights cannot be acquired without registration (with the exception of well-known marks). Notwithstanding, it is possible to protect non-registered signs by other means such as unfair competition.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
A famous foreign trademark is afforded protection even if not used domestically.
It is sufficient that the mark is famous in an Andean country.
In accordance with article 228 of Decision 486, in order to determine the notoriety of a distinctive sign, due regard shall be had to the following factors among others:
- the degree to which it is known among members of the relevant sector in any member country;
- the duration, extent and geographical scope of its use inside or outside any member country;
- the duration, extent and geographical scope of the publicity accorded to it inside or outside any member country, including the advertising and display of the goods or services, the establishment or the activity to which it is applied, at fairs, exhibitions or other events;
- the value of any investment made to promote it, or to promote the establishment, activity, goods or services to which it is applied;
- the sales and income figures of the business that owns it in so far as they relate to the sign whose notoriety is claimed, both at the international level and at the level of the member country in which protection is sought;
- the degree of inherent or acquired distinctiveness of the sign;
- the accounting value of the sign as a corporate asset;
- the volume of inquiries from persons interested in obtaining a franchise or licence for the sign in a particular territory;
- the existence of significant manufacturing, purchase or storage activities on the part of the owner of the sign in the member country in which protection is sought;
- international trade aspects; or
- the existence and age of any registration of the distinctive sign granted or applied for in the member country or abroad.
In accordance with the above-mentioned criteria, the following proofs should be submitted:
- commercial invoices for the sale of goods or for rendering services;
- any advertising, even in virtual media;
- results of opinion polls among consumers or in business circles;
- registration certificates of the mark in foreign countries
- inventories of finished goods;
- market research; and
- documents evidencing the amounts invested in the advertising and promotion of the mark.
In addition to the above-mentioned, 'traditional probatory' means other types of circumstantial notoriety proofs are being recognised that arise from the development of the international commerce and from the modern transport means, communications and promotion in the global market, such as advertising related to the tourist exchange (magazines distributed in flight by air carriers), volume of requests of persons interested in obtaining a franchise or licence of the mark in a determined territory, existence of manufacturing activities, purchases or storage by the owner of the mark in the territory wherein protection is sought, residual effects of advertising (understood as what remains in the mind of the consumer after having received an advertising message) projected from a territory to another one, international spreading of sport events and entertainment in which there is advertising content, etc.
Additionally, the following documents would be useful to support the notoriety assertions in an opposition proceeding:
- advertising material showing a true date (catalogues, newspaper articles, magazines and inserts, etc);
- contracts signed with advertising enterprises regarding posters and billboards in strategic sites showing the marks;
- documents evidencing the annual amounts invested in the advertising and promotion of the mark in the communication media;
- results of opinion polls among consumers or in business circles and market research;
- annual turnover reporting profits; and
- information regarding events sponsored by the owner of the mark, either in former or later years.
Decision 486 protects the notorious mark against the risk of confusion and dilution. The protection of the risk of dilution goes beyond the principle of specialisation against any subsequent use of an identical or similar sign that may cause weakening of the distinctive high capacity of the notorious brand even if it is used for different products or services (Process 117-IP -2014 of 10 January 2014).
In the Obligatory Enforcement Precedent (the Peruvian case of Kent, Resolution No. 2951-2009/TPI-INDECOPI of 9 September 2009) it is emphasised that for a notorious mark to have protection against the risk of dilution, it must prove its notorious quality and maintain a strong relationship with the product or service that distinguishes.The benefits of registration
What are the benefits of registration?
In fact, the registration of a trademark allows to obtain successful infringement actions against third parties, to access to specialised courts, availability of border measures before the customs authorities wherein it is also possible to record the registered marks in the Voluntary Registry of rights holders.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
Only a signed power of attorney and priority document, if a priority is claimed.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
Normal prosecution of a trademark usually takes between six and nine months. The time would increase (by about three more months) in cases where any requirements by the Trademark Office Authorities arise (adaptation, precision of exclusion of some of the originally filed goods or services) or when formal papers are missing (power of attorney and priority document, etc).
If an opposition is filed, the processing takes at least 10 more months before the first administrative instance and if the case is kept in abeyance at the request of the interested party or ex officio until a related case is resolved, it will take about nine further months at the appeal stage (second administrative instance) depending on the complexity of the case and because pursuant to the law the Trademark Office Authorities have a term of 180 days to conduct administrative proceedings (article 24 of Legislative Decree No. 1075).
Costs for obtaining a registration of a trademark without opposition total about US$700, including official fees and service fees.
A power of attorney is required to file a trademark application. The document only needs to be signed by an authorised officer of the applicant mentioning his or her full name and capacity. Notwithstanding, a signed power could not be used in the case of entering an infringement action or a lawsuit (before the judiciary), in which case, a power of attorney document, duly notarised and apostilled, would be necessary.
Registration formally come into effect after the issue of the Certificate of Registration.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Although Peru is not a party to the Nice Agreement, the Andean Community (Bolivia, Colombia, Ecuador and Peru) has adopted and applies the Nice Classification of Goods and Services for the purposes of the registration of marks.
Peru adhered to the Trademarks Law Treaty on 6 August 2009, which came into force on 6 November 2009, wherein the multi-class system is stated. Legislative Decree No. 1075 (domestic law) in force from 1 February 2009, adopted the multi-class application figure. In this sense, multi-class applications are available for a single application containing goods or services, or both, belonging to more than one class and said application shall give rise to a single registration. Notwithstanding, if during the processing of the application only some of the classes are granted and the remainder ones are rejected, the applicant can divide its application in order to obtain the registration certificate for those granted classes instead of awaiting the outcome of the rejected classes that are in the appeal stage. No savings are available since the same official fees are applicable to all the classes involved.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
After the expiry of a 30-day term counted from the following working day of publication in the INDECOPI Electronic Gazette (article 6.2 of Supreme Decree No. 071-2017-PCM), and if no objections have been filed, the Commission of Distinctive Signs (non-contentious case areas) will proceed to perform the examination of registrability and would cite those registered trademarks that in its opinion are confusingly similar to the sign applied for and that would engender risk of confusion in the market for consumers.
In cases where objections have been filed, the Commission of Distinctive Signs (contentious case areas) will assess both the arguments of the objector and the response of the applicants and will issue an opinion on the objection’s merits and will grant or refuse registration of the trademark and inform the parties of its decision. It may be the case that the objection is declared groundless and that the application is denied ex officio based on the examination performed by the Trademark Office Authorities in their database.
Current regulations (article 56 of Legislative Decree No. 1075A) states that letters of consent are not allowed between unrelated companies, only coexistence agreements. In accordance with a precedent of compulsory observance of the Second Administrative Instance of INDECOPI on Coexistence Agreements (Resolution No. 4665-2014/TPI-INDECOPI of 15 December 2014), for these agreements to be valid and binding between the parties and not violate the law, they must comply with minimum conditions. Trademark coexistence agreements may contain different matters that represent the will of the parties, and it is possible to delimit the territory of use of the trademarks and the different products to which the agreement will be applied. Therefore, to be viable, the agreement must contain measures and provisions to reduce the risk of confusion among consumers regarding the origin of the products or services concerned.
For coexistence agreements to be accepted by the Administrative Authority, they must meet the following minimum conditions:
- information on the signs that are the object of the agreement, stating denominative and figurative elements thereof, as well as the goods and services to which said signs are referred (as they are registered or requested);
- delimitation of the territorial scope within which the agreement will be applicable;
- delimitation of the goods or services to which the signs of the coexistence agreement will be restricted in the market. For this purpose, it will be necessary for the parties to request the effective limitation of the goods or services in the respective registrations and applications;
- delimitation of the form of use and presentation of the signs;
- pointing out the consequences in case of breach of the agreement; and
- establishing dispute resolution mechanisms in case any litigious matter arises between the parties.
Agreements that do not include the above minimum conditions will not be accepted by the Administrative Authority; however, the foregoing does not determine that agreements containing such minimum conditions will be approved automatically, since the Authority must evaluate whether or not the parties’ agreement meets with the purpose pursued through the agreement.
The acceptance of a coexistence agreement assists the Administrative Authority and will depend on the conditions expressed therein, in order to protect the general interests of consumers.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
No use of a trademark or service mark has to be claimed before registration is granted, so no proof of use needs to be submitted during the processing of the application. Likewise, no proof of use is required to maintain or renew a registration.
In accordance with article 4 of the Paris Convention, it is possible to claim priority of foreign registrations and the corresponding applications should be filed within a six-month period.
Also, in accordance with article 9 of Decision 486, the first application for the registration of a trademark that is validly filed in any other Andean country shall confer on the applicant or the applicant’s assignee the right of priority in filing for the registration of the same trademark in Peru.
The registration of a trademark is vulnerable to cancellation action for non-use by third parties after a three-year term following its granting. Therefore, it is advisable to use the mark prior to finishing said period in order to defeat a third-party challenge based on grounds of non-use.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
It is not mandatory to use words or symbols to indicate that a trademark is registered. However, use of the denomination 'registered mark', RM or other equivalent together with signs that do not possess mark registration are prohibited and sanctioned.Appealing a denied application
Is there an appeal process if the application is denied?
After the issuance of an adverse decision (denial of the application) the applicant would have a term of 15 working days to challenge the decision and in said case the applicant would have two alternatives to challenge the adverse decision issued from the Trademark Office Authorities:
- to file a reconsideration brief (based on new documentary proof), which is processed before the same first administrative instance; and
- to lodge an appeal before the same authority that issued the decision by submitting new documents, with a different interpretation of the proof submitted or with purely legal questions. After the appeal is processed, the first instance authorities will submit the appeal to the second administrative instance.
The final resolution to be issued by the second administrative instance exhausts the administrative channel and can only be impugned before the judiciary via a lawsuit within a three-month term counted from the date on which the losing party has been notified of the adverse resolution.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Applications are published for opposition purposes and any third party may oppose the application within a 30-day period following the publication date. The opposition may be grounded on a Peruvian-granted registration or an earlier application by alleging the absolute and relative prohibitions stated in articles 135 and 136 (lack of distinctiveness or risk of confusion with regard to third-party rights).
In accordance with article 146: ‘Within 30 days following such publication, any person having a legitimate interest may, only once, file a valid objection that could result in invalidation of the trademark registration’.
The competent national office may, at the request of a party and once only, grant an additional 30-day period in which to provide valid reasons for opposing registration of the trademark.
Reckless objections may be sanctioned if provided for by domestic legislation.
No objections based on such trademarks as may have existed at the same time as that being applied for may be lodged against the application within six months following expiry of the grace period referred to in article 153.
Further, according to article 147 of Decision 486, an Andean opposition may be filed based on a trademark registration granted in a member country of the Andean community (Bolivia, Colombia and Ecuador) and to meet the Andean opposition requirements, it is necessary to apply in Peru for the registration of a trademark, identical to the mark that is the basis of the opposition, otherwise the opposition would not be processed.
Moreover, an opposition may be filed based on article 7 of the General Inter-American Convention for Trademark and Commercial Protection if the opponent is a contracting state or domiciled foreign national who owns a manufacturing or commercial establishment in any of the contracting states. The conditions for the application of the Convention are to prove 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 him or herself 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 domestic legislation in such country and by this Convention.
The applicant should respond to the opposition within a term of 30 working days after being notified of the opposition brief. At the request of the opponent the Trademark Office Authorities will grant an additional 30-day period to ground the opposition and in the same manner the applicant may request a single period of 30 additional days in which to provide valid reasons for the refutation.
Furthermore, based on article 137 of Decision 486 an opposition may be filed alleging bad-faith arguments.
In accordance with paragraph (h), article 136 of Decision 486 an opposition may be based on a well-known trademark.
Further, during the opposition proceeding the applicant may institute, as means of defence, a cancellation action for non-use against the mark that is the basis of the opposition.
Moreover, pursuant to article 169, if the owner of a trademark has caused or allowed its trademark to become a common or generic sign to identify or denote one or several of the goods or services for which it was registered, the authority shall order, ex officio or at the request of an interested party, the cancellation of the trademark or the limitation of its scope.
In this regard, a trademark shall be considered to have become a common or generic sign if, in commercial circles and for the public, it has lost its distinctive character as an indication of the corporate source of the product or service to which it is applied.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A trademark registration is granted for a term of 10 years from its grant date and is renewed for successive 10-year periods. To maintain the registration, it is only necessary to apply for renewal six months prior to its expiration date or six months after the expiration date (grace period). In accordance with current regulations and practice no proof of use is required to renew the registration.Surrender
What is the procedure for surrendering a trademark registration?
In order to request a waiver of a trademark right it is necessary to submit a specific power of attorney, duly notarised and legalised by apostille.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
A trademark can be protected as an industrial design before being registered or used since for constituting a design it is demanded that the design is new.
Also, a trademark can be protected as copyright if it fulfils having originality.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
In accordance with article 233 of Decision 486, the competent national authority shall, at the request of the owner or lawful rights holder in respect of a well-known distinctive sign, where the said sign has been unlawfully registered by an unauthorised third party in a member country as part of a dominion name or electronic mailing address, order the cancellation or amendment of that registration of dominion or electronic mailing address, provided that use of that name or address is likely to have one of the effects cited in the first and second paragraphs of article 226.