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.