2017 in review: summary of INDECOPI’s innovation in the field of Trademarks

Ernesto Barzola
Lawyer at Barreda & Moller

In recent years, many Intellectual Property Offices of Latin America have been enacting new provisions as to harmonize their IP systems according to the international standards. Countries such as Peru, through the National Institute for the Defense of Competition and Intellectual Property (INDECOPI), have implemented new measures in order to improve the efficiency and speed of the registration and granting procedures of IPRs.

In this regard, it must be highlighted that INDECOPI ended 2017 with a total of 34.213 registered trademarks, which represents a grow th of 27,3 % with respect to 2016. This increase was achieved as part of INDECOPI’s resolution to reduce registration time for trademarks from 6 months to less than 4 months.

One of the measures taken by the INDECOPI (covering both trademarks and patents) was the online publication of the applications. The online publication not only reduced time of registration proceedings but has also helped reduce the costs associated to such proceeding. Before online publication, applicants had to pay an additional fee (between 40 to 150 euros, depending on the size of the publication).

Early 2017, rules regarding Industrial property proceedings were modified. Some of these modifications, aiming to reduce processing times are the following:

– Adoption of measures to reduce the workload of Administrative Courts. Mainly through a better allocation of competence regarding grounds of appeal. The Administrative Court will hear of appeals of opposition, revocation, nullity actions and infringement actions. Directorates and Commissions will hear about appeals regarding denial of registration when no opposition has been filled.

– To avoid further delays during a proceeding, there is now a prohibition to file additional documents or briefs when a proceeding is ready to be resolved. Unless it provides an out-of-court settlement satisfactory to the parties (for example, coexistence agreement or an agreed suspension of proceedings).

Regarding infringement actions, henceforth the Administrative Court will not be able to increase a fine imposed on the defendant unless the plaintiff had appealed the amount of the fine. This practice, which arose in the courts, has now been included in the Peruvian Trademark Law.

Finally, the Peruvian Trademark Office uploaded its database to the TMview instrument allowing interested parties in filling application in Peru to have access to this registry. Not only it simplifies the procedures but it also allows to reduce the costs.

Two decisions issued last year by the Andean Community are also worth mentioning.

First, the Andean Court of Justice clarified the difference between a well-known trademark and a renowned trademark. The importance of the decision is due to the fact that Decision 486 does not regulate the renowned trademarks and its rules are limited to the well-known trademarks.

According to this Decision, there is no need to prove the “renowned” character of the trademark in order to be recognized as such. Notwithstanding the aforementioned, the specification made by the Andean Court of Justice consist on a quotation as a footnote, hence, it is very likely that the National Courts continue to require proof of the alleged well-known character of the trademarks. We will have to wait for a modification of the Andean Trademark Law which is expected for a near future.

Second and finally, regarding revocation proceedings (also known as cancellations for non-use) when complying with the required proof of use, the following should be taken into account:

–       Revocation proceedings are not intended to punish trademark owners who advertise and make their products available to the public if the number of sales is not as elevated as expected. Therefore, the analysis should not be limited to accountable documentation but also take into account advertisement and presence in the media or the market.

–       Sales should be analyzed on a case-by-case basis in order to determine whether or not the pause of sales is justified or not.

–       Given the above, if the owner of the trademark can prove the use of the trademark at any moment within the relevant period, revocation must be dismissed.

The repercussion of the latest decision is due to the reticence from the Trademark Authority to consider proven the use of a trademark, if the documents filed were not able to demonstrate an elevated quantity of sales or if the sales were sporadic.

In conclusion, 2017 was important for the Peruvian Trademark Office in terms of innovation and for the Andean Community in terms of a new vision on how to apply the different concepts of the Decision 486. We can expect the impact of these measures to be felt as of 2018 and, given the improvements implemented in 2017, further legislative developments can be expected for 2018.

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