Legal frameworkDomestic law
What is the primary legislation governing trademarks in your jurisdiction?
Decision 486/2000 of the Commission of the Andean Community and Legislative Decree No. 1075 and its modifications.International law
Which international trademark agreements has your jurisdiction signed?
- the General Inter-American Convention on Trademark and Commercial Protection, Washington, 1929;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (including trade in General Agreement on Tariffs and Trade Counterfeit Goods);
- the Paris Convention for the Protection of Industrial Property;
- the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Lisbon Agreement);
- the Bilateral agreement with France (Marks); and
- international free trade agreements between Peru and: Australia, China, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, Costa Rica, Cuba, Guatemala, Honduras, the European Free Trade Association, the European Union, Japan, Mercosur, Mexico, Panama, South Korea and the United States.
Which government bodies regulate trademark law?
The National Institute for the Defence of Competition and Intellectual Property Protection (INDECOPI).
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.
Licensing and assignmentLicences
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Since the licence is a private consensual agreement between the parties its validity is not subject to official recordal. However, since licences and other acts affecting industrial property rights shall only take effect in respect of third parties since from its recordal, it would be advisable to record the licence to the purposes of proving use or taking legal actions in the name of the owner based on the registered mark.
Under the Peruvian legal system, it is optional whether or not to include specific provisions in a licence agreement, such as quality control clauses, and the document can be drafted in a standard form.Assignment
What can be assigned?
Trademarks can be assigned with or without goodwill for all goods and services covered. However, if the change of ownership does not involve all the goods or services listed in the registration of the owner, a separate registration shall be created in respect of the goods or services for which there has been a change in ownership. The assignment can be made with or without the firm to which it belongs and made in writing. The Trademark Office Authorities can refuse the recordal if the assignment could lead to the risk of confusion.Assignment documentation
What documents are required for assignment and what form must they take? What procedures apply?
A signed power of attorney and a deed of assignment are required from the assignee and duly executed by both the assignor and assignee. In accordance with current legislation, notarisation and legalisation are required for the deed of assignment.Validity of assignment
Must the assignment be recorded for purposes of its validity?
The ownership change must be recorded to take effect in respect of third parties. Failure to register shall render the assignment invalid in respect of such third parties.Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
Security interests are recognised in Peru and the document should be executed by both parties, and notarised and legalised by apostille. Security interests must be recorded in the Trade Mark Office records for purposes of validity and enforceability.
EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
Border measures are available in Peru through the Customs Authority. The Customs Authority is an autonomous body of control and sanctions within its own Customs Law. With regard to counterfeit trademarks, they are responsible for warning and verifying if the exported and imported goods infringe any intellectual property rights. To this end, they request INDECOPI to verify the registration and validity of the marks that are subject of presumed infringement.
INDECOPI is the official body that grants the registration of a trademark, unlike the Customs Authority, which records a trademark already registered for border measure purposes; that is, the Customs Authority only owns a list of records to warn the owner of a registered trademark of the entry of goods including their packaging bearing an identical or confusingly similar sign to the validly registered trademark without authorisation, so that such goods would infringe the rights granted to the owner of the trademark by the legislation of the import country. On such occasions the owner of the registered trademark may request the Customs Authority suspend the customs operation and immobilise the goods and should supply the necessary information and a sufficiently detailed and precise description of the goods subject of the alleged infringement so that they can be identified.
Any party initiating or intending to initiate an action for infringement may request the Trademark Office Authorities to order immediate provisional measures for the purpose of preventing an infringement from occurring, avoiding its consequences, obtaining or preserving evidence, or ensuring the effectiveness of the action or compensation for damage.
Pursuant to article 238 of Decision 486, infringement actions may be entered in the administrative channel (before the Commission of Distinctive Signs of INDECOPI) against any persons infringing rights of a trademark owner or against any persons performing acts that are extremely likely to result in the infringement of that right. In the case of the co-owner of a right, any one of the co-owners may bring action for infringement without the need for consent from the other party.
Article 155 establishes the grounds that may be invoked in an infringement action, which are:
(a) using or affixing the trademark or a similar or identical distinguishing sign to products in respect of which the trademark is registered; to products connected with the services for which the trademark is registered; or to the packages, wrappings, packing, or outfittings of those products;
(b) removing or changing the trademark, once it has been placed on or affixed to the products in respect of which the trademark is registered, for commercial purposes; to products connected with the services for which it is registered; or to the packages, wrappings, packing, or outfitting of those products;
(c) manufacturing labels, packages, wrappings, packing, or such other materials as may reproduce or contain the trademark, and selling or storing such materials;
(d) using, in the course of trade, identical or similar signs to the trademark for goods or services, where such use would result in a likelihood of confusion or mistaken association with the registration owner. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed;
(e) using in the course of trade identical or similar signs to a well-known trademark with respect to any goods or services, where such use, by weakening the distinctive force or the value of that trademark for commercial or advertising purposes or by taking unfair advantage of the prestige of the trademark or of its owner, could unjustly damage the registration owner’s economic or commercial interests;
(f) making public use of identical or similar signs to a well-known trademark, even for purposes that are non-commercial, where such use could weaken the distinctive force or value of that trademark for commercial or advertising purposes or take unfair advantage of its prestige.
Proof of the infringement, such as a sample of the infringing product and voucher for its purchase, should be submitted in support of the alleged infringement.
Civil actions may be entered before specialised courts to obtain compensation for damage after obtaining a final favourable decision in an infringement proceeding, and the following criteria shall be used, among others, to calculate the amount of compensation to be paid for damage:
- the consequential damage and lost profits suffered by the rights holder as a result of the infringement;
- the amount of profit obtained by the infringer as a result of the acts of infringement; or
- based on the commercial value of the infringed right and such contractual licences as may have already been granted, the price the infringer would have paid for a contractual licence.
Criminal actions may be instituted before the court or the Public Prosecutor against persons committing industrial property offences such as trademark counterfeiting, and the objective is that such persons are sanctioned with penalties or punished with imprisonment.Procedural format and timing
What is the format of the infringement proceeding?
The stages of an infringement proceeding in the administrative channel are:
- formal denouncement in written with proofs of the infringing act;
- an inspection visit at the premises of the infringer in order to verify the denounced infringing acts;
- minutes of the inspection;
- reply of the defendant;
- a conciliation hearing of the parties;
- appeal (within a 15-day term by the losing party);
- reply to the appeal (by the winning party); and
- final administrative resolution issued by the administrative court (second instance).
Discovery is allowed and the Trademark Office Authorities may require from the parties the submission of documentation or exhibition of goods.
Technical reports from experts may be requested by the Trademark Office Authorities to verify the technical features of the original goods compared with the counterfeit goods.
At first instance, the decision is issued by a professional commission made up of three members and a director.
At second instance (administrative court), the decision is issued by four members and one president.
The infringement proceeding is summary and brief. It typically lasts nine months in the first instance and seven months in the second instance. It is possible to state that in administrative proceedings reconsideration briefs are not available, only appeals.
A criminal enforcement mechanism is also available and the plaintiff may initiate a criminal action before the District’s Attorney office that will require a technical report from the Commission of Distinctive Signs. Thereafter the public prosecutor will assess the denouncement and the filed proofs to determine the facts with the support of the police. Then the police’s statement will be assessed by the public prosecutor, who will decide to formalise the denouncement before the Criminal Court. After the denouncement has been formalised, the case will be taken over by a judge and the plaintiff should constitute a civil party.
As to the destiny of the seized goods, either in administrative proceedings or in criminal denouncements, the Trademark Office Authorities may order their destruction or donation.Burden of proof
What is the burden of proof to establish infringement or dilution?
To establish that an infringement has occurred, the following actions should be taken:
- the infringing act or fact should be proven by enclosing as a proof, a sample of the infringing product bearing the infringing trademark, as well as a copy of the invoice or ticket of sales wherein the infringing sign can be clearly seen;
- in accordance with paragraph (h), article 36 of Decision 486 to establish that dilution occurs, the following are required:
- that the trademark is well known, to which end it is necessary to submit documents evidencing a wide broadcast and extensive knowledge by the public consumer (advertising and invoices), market studies, balances, sponsor etc, in accordance with the criteria set forth in article 228 of Decision 486;
- proof the act or fact that puts the well-known trademark at risk of dilution, proving that the trademark is unique in the market and that it distinguishes only one sector of products or services and that there is no other equal or similar trademark, either in the same sector or another one; and
- that it is a unique trademark and strongly distinctive.
Once the above actions have been taken, the infringing sign or the sign that engenders risk of dilution with the registered or well-known trademark is examined.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The remedy for an alleged trademark infringement must be brought by the trademark owner or by the licensee, if a licence agreement is recorded and the terms of the licence authorise it to take said legal action.
A criminal complaint may be only brought by the trademark owner before the court.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
No infringement action is possible against activities that take place outside the country of registration, considering that, in accordance with current legislation, the rights are territorial. However, when goods manufactured in Peru are exported from Peru or imported into Peru bearing a mark that is protected in Peru, it will be possible to prevent their commercialisation.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
It is not possible to take legal action against third parties outside the country (see question 30).Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
A typical time frame for an infringement or dilution proceeding would be nine months before the Commission of Distinctive Signs (first administrative instance). In the case that the decision is appealed before the second instance a final resolution could be expected within a seven-month term. Typically, the final decision is not impugned before the judiciary. If the cautionary measure (preliminary injunction) is accepted by the Trade Mark Office, it will be kept until the issuance of a resolution, which may be appealed. If the final decision declares the infringement action well founded, the preliminary injunction will be final and the plaintiff will decide whether the immobilised goods should be destroyed or donated.Limitation period
What is the limitation period for filing an infringement action?
The right to action for infringement shall lapse two years counted as of the date the owner learned about the infringement or in any case five years after the infringement was last committed.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
Costs associated with an infringement or dilution action before the two administrative instances range from US$2,000 to US$3,000.Appeals
What avenues of appeal are available?
A decision issued by the first administrative instance can only be appealed within a peremptory term of 15 days counted from the notification date. Reconsideration briefs are not available in these kinds of administrative proceedings.
After the issuance of a second resolution by the administrative court no further appeals are available. Only a lawsuit before the judiciary would be possible, but defendants typically do not resort to the judicial power.Defences
What defences are available to a charge of infringement or dilution, or any related action?
Articles 157 (good-faith use) and 158 (exhaustion of rights) of Decision 486 would be available against a charge of infringement or dilution.
Articles 157 and 158 state the following.Article 157
Provided that it is done in good faith and does not constitute use as a trademark, third parties may, without the consent of the owner of the registered trademark, make use in the market of their own names, addresses, or pseudonyms, a geographical name, or any other precise indication concerning the kind, quality, amount, purpose, value, place of origin or time of production of their goods or of the rendering of their services, or other characteristics thereof, provided that such use is confined to identification or information purposes only and is not likely to create confusion over the source of the goods or services.
Trademark registration shall not confer on the owner the right to prevent a third party, where proceeding in good faith, from using the trademark to announce - even in advertising using brand comparisons - offer for sale, or advertise the existence or availability of lawfully trademarked goods or services, or from advertising the compatibility or suitability of spare parts or accessories that may be used with goods bearing the registered trademark, provided that such use is confined to the purpose of informing the public and is unlikely to lead to confusion over the corporate origin or the goods or services concerned.
In Process 415-IP-2015 of 23 June 2016, referring to the limitation on the exclusive use of the registered trademark, it is interpreted that article 157 allows that third parties, without the consent of the owner of a registered trademark, may perform certain acts in the market with regard to the use of said mark provided that the following use conditions are fulfilled:
- that the use is done in good faith, that is, lack of knowledge of the previous trademark or that the reference to the another’s trademark is fair in terms of the legitimate interests of the owner, the general interest of the consumers and the proper functioning of the. Use cannot take advantage of the registered trademark neither causing dilution of the well-known trademark nor other uses but for identification or information purposes;
- that the use is not performed as a trademark. It cannot be used as a distinctive sign and should be limited to making reference to the characteristics of the product or service and not engendering risk of confusion with the registered trademark. Use cannot lead the public into error over the actual origin of the goods or services (due diligence);
- that the use is exclusively confined to identification or information purposes of any characteristic of the goods or services, to respect commercial good faith, uses and honest practices; and
- that the use does not lead the public into error over the corporate origin of the goods or services. Use should not be done as a distinctive sign nor cause the impression that such goods or services provide from enterprises that are economically linked.
It should be noted that the above-mentioned conditions must be submitted concurrently.Article 158
Trademark registration shall not confer on the owner the rights to prevent third parties from engaging in trade in a product protected by registration once the owner of the registered trademark or another party with the consent of or economic ties to that owner has introduced that product into the trade of any country, in particular where any such products, packaging or packing as may have been in direct contact with the product concerned have not undergone any change, alteration or deterioration.
For the purposes mentioned in the preceding paragraph, two persons shall be considered to have economic ties when one of the persons is able to exercise a decisive influence over the other, either directly or indirectly, with respect to use of the trademark right or when a third party is able to exert that influence over both persons.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?Remedies when an infringement action or dilution is successful
One or more of the measures established in article 241 of Decision 486 can be applied, such as cessation of infringing acts, removal from commercial channels of the infringing products or the materials and means whereby the infringing products are manufactured, confiscation and destruction of infringing products, permanent or temporary closure of the premises where the products bearing the infringing mark are manufactured or marketed, a fine and publication of the resolution declaring it to be well founded, the infringement action, costs and expenses.Remedies when a dilution action is successful
Cessation of the advertising causing the dilution and destruction of the product or products that contribute to dilution, as well as a fine.Existing criminal remedies
In accordance with articles 222 and 223 of the Criminal Code, offences against industrial property related to trademarks are sanctioned by imprisonment for not less than two years or greater than five years, fines, disqualification to do business and destruction of the seized goods.ADR
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
ADR techniques are available in Peru in both administrative proceedings and civil actions.
Typically, amicable agreements can be negotiated between the parties as a result of conciliation hearings, and if the parties reach a private agreement in the presence of the authorities, the administrative process will be concluded and the parties are obliged to fulfil the terms of the agreement. Generally, the parties to an infringement proceeding do not resort to arbitration.
The benefits of these kinds of agreements are to shorten the process, since the authorities would no longer need to issue a decision, to reach a solution satisfying both parties and to reduce the costs involved for the parties.
There are no risks in resorting to ADR techniques.
Update and trendsKey developments of the past year
Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?
Over the course of the year, INDECOPI implemented public policies through workshops and training at a regional level aimed at benefiting small enterprises and providing them with access to trademarks through Supreme Decree 092-2018PCM, which exempted the payment of official fees to collective marks. However, these public policies lapsed on 5 September 2019. As a result of this, there are now 1,698 registered collective marks. Prior to 28 August 2017, the number of registered collective marks was 222. Through this public policy, the collective mark has acquired economic and commercial value and promotes the economic activity of the products to acquire a reputation in both the local and international market.
On the other hand, on 27 August 2019, INDECOPI announced the launch of a trademark search that is free to users.
Furthermore, Legislative Decree No. 1397 of 7 September 2018 modified Legislative Decree No. 1075 in several aspects, one of them being the modification of article 3 of Legislative Decree No. 1075 with the inclusion of two constitutive elements of industrial property.
- guaranteed traditional specialties - which aim to protect traditional recipes, methods of production, transformation or modification that correspond to the traditional practice applicable to a product or food aimed at giving added value to traditional products in their commercialisation, production or transformation, and to inform consumers of their attributes; and
- geographical indications - which within the objective of the rule is intended to provide tools for artisans, producers, farmers and small business owners, among other economic participants, in order to generate greater value for their traditional products or recipes, improve the competitiveness of producers in the market and boost the development of various economic sectors nationwide since the products and food of differing quality can be a tool for sustainable development in rural places.