Trademark coexistence agreements under Peruvian legislation

Introduction

Peru is a member of the Andean Community, along with Colombia, Ecuador and Bolivia. The Andean Community is a customs union which aims to promote the development of member states by means of integration and economic and social cooperation, with the ultimate goal of forming a common Latin American market.

The treaty creating the Andean Community provides for the establishment of a common IP regime for all member states. Several Andean regulations have accordingly been passed to regulate intellectual property; the regulation presently in force is Decision 486 Establishing the Common Industrial Property Regime.

However, no unified Andean registration system exists; nor does a unitary IP right that covers all member states. Each country has its own patent and trademark office, which grants rights that are valid only within its territory and cannot be enforced in the territory of another member state. The following exceptions apply to this principle:

• Where an IP right is registered in more than one member state, the rights holder may claim the filing date of the first registration for subsequent registrations, provided that the subsequent registrations are carried out within the following timeframes:
  • months for patents and utility models; and
  • six months for trademarks and industrial designs.
• Trademark oppositions may be filed based on similarity to a prior trademark that has been registered in another member state.
• In trademark cancellation actions on the grounds of lack of use, ‘use’ is understood to extend to all member states.
• Where goods are covered by a trademark granted in one member state, it is possible to market them in another member state where the same trademark covering the same goods has been granted to a different owner, provided that the requirements established in Decision 486 are met.

No Andean member state may regulate through internal legislation those IP matters which are already regulated through Andean regulations. However, under the so-called ‘principle of indispensable complement’, each member state may internally regulate IP matters that are not regulated through Andean regulations – as explicitly stated in Article 277 of Decision 486.

Accordingly, Peru has passed Legislative Decree 1075, which implements regulations to facilitate IP access. Peru thereby complies with both the US-Peru Free Trade Agreement and Andean regulations.

Grant of trademark rights in Peru

In Peru, as in other Andean member states, a trademark right is obtained through registration with the competent national office according to Decision 486. A registered trademark grants the owner the right to exclusive and excluding use for a 10-year period, which can be renewed indefinitely. ‘Exclusive’ means that the trademark owner is the only party that can use the trademark in relation to any of the goods and services for which it is registered. ‘Excluding’ means that the owner has the power to prevent third parties from using identical or similar trademarks for the same or similar goods.

First, the applicant files an application at the National Institute for the Defence of Competition and Intellectual Property Protection (INDECOPI). INDECOPI publishes the trademark so that third parties can file an opposition based on either:

• absolute grounds – due to lack of distinctiveness; or
• relative grounds – where a prior third-party right may be negatively affected by the grant of the requested trademark. Typically, these grounds exist where a pending or registered trademark may be confused with the mark.

INDECOPI may refuse a trademark based on the above grounds ex officio, even if there is no third-party opposition.

In practice, trademarks are most often refused because INDECOPI understands that they may be confused with pending or registered trademarks. Coexistence agreements are therefore important for the registration of trademarks which may be likely to cause confusion.

Coexistence agreements

Andean regulations do not cover trademark coexistence agreements. In Peru, they are regulated by Legislative Decree 1075, which establishes that such agreements facilitate the grant of a trademark that is identical or similar to a prior trademark if, in the opinion of INDECOPI, coexistence will not affect the interests of consumers.

Since Legislative Decree 1075 became effective in 2008, coexistence agreements have been filed, but their acceptance has depended on the judgement of INDECOPI, which has rejected several agreements – thereby refusing the registration of important trademarks – on the ‘interests of consumers’ basis.

Arguably, the party with the greatest interest in preventing confusion between two trademarks is the owner of the prior trademark; it follows that if the owner consents to the registration of the later trademark, it must be because the two trademarks are unlikely to cause confusion. However, logical legal arguments such as this have historically not moved INDECOPI.

INDECOPI has stated in various resolutions that its duty is to protect the overriding interests of consumers and that it therefore cannot accept the coexistence of trademarks which, in its opinion, could cause confusion among consumers regarding the origin of the goods they cover.

Although INDECOPI has the power to institute infringement actions ex officio against the use of trademarks that may be confused with trademarks registered for the same goods, it has never done so. Accordingly, trademarks that were refused ex officio by INDECOPI have actually ended up on the market, coexisting with the prior trademarks that formed the basis for their refusal. These trademarks have not negatively affected consumers – on the contrary, they have benefited consumers with a new offer.

INDECOPI seems not to understand that when certain regulations prohibit the registration of trademarks that may confuse consumers, the prohibition is not meant to protect any specific and real consumer. It is an abstract registration rule, meant to keep the register free of duplication or overlapping of trademarks.

Further, whether one trademark is likely to be confused with another is a matter which interests the owners of those trademarks – not consumers. The example of the EU Community trademark proves this: in the Community trademark system, the relevant IP office may not refuse a trademark ex officio because it is susceptible to being confused with a prior trademark. Instead, the application will be refused on these grounds only if the owner of the prior trademark files an opposition. Absent opposition, the requested trademark will be granted and so will the right to use it.

Despite this, INDECOPI has regularly refused registration of trademarks on the grounds of confusion with a prior trademark, even where the owner of the prior trademark gave express consent through letters of consent or coexistence agreements.

Importantly, letters of consent differ from coexistence agreements. Letters of consent are unilateral acts, commitments which bind only those which draft them (ie, the owner of the prior trademark), and in which the trademark applicant does not participate. In contrast, coexistence agreements are contracts in which two parties (ie, the owner of the prior trademark and the trademark applicant) participate and under which both parties undertake commitments, obligations and rights.

Fortunately, the situation regarding coexistence agreements has changed since the IP chamber of the INDECOPI Tribunal handed down case law interpreting the national regulation of trademark coexistence agreements through Resolution 4665/2014. This resolution establishes that in order for a trademark coexistence agreement for identical or similar trademarks to be acceptable, it must reduce the likelihood of consumer confusion regarding the origin of the goods covered as much as possible.

Resolution 4665/2014 establishes that a trademark coexistence agreement must specify:

• the trademarks that are subject to the agreement and the goods that they cover;
• the geographic scope of the agreement;
• the goods and services to which the trademarks will be limited;
• the forms of use and presentation of the trademarks;
• the consequences in the event of violation of the agreement; and
• a dispute resolution mechanism.

Recent rulings

Since the case law was handed down on February 11 2015, the following resolutions have accepted trademark coexistence agreements for identical or similar trademarks because they met the minimum requirements mentioned above:

• Resolution 1451/2015, which accepted the coexistence agreement between the trademarks MARSHALL AMPLIFICATION and logotype and MARSHALL and logotype (registered), and FRANKLIN & MARSHALL (requested) in Class 25, and granted registration of the latter;
• Resolution 960/2015, which accepted the coexistence agreement between the trademarks SENTIVA (registered) and ZENTIVA (requested), both in Class 10, and granted registration of the latter;
• Resolution 1091/2015, which accepted the coexistence agreement between the trademarks VIACOM (registered) and VIAKON (requested), both in Class 9, and granted registration of the latter;
• Resolution 1168/2015, which accepted the coexistence agreement between the trademarks UPS and logotype and UPS (registered), and YUPS and logotype (requested), both in Class 38, and granted registration of the latter;
• Resolution 589/2015, which accepted the coexistence agreement between the trademarks FLOWER TWIST (registered) and FANTASY TWIST (requested), both in Class 3, and granted registration of the latter;
• Resolution 185/2015, which accepted the coexistence agreement between the trademarks TPR (registered) and TRR and logotype (requested), both in Class 7, and granted registration of the latter; and
• Resolution 0512/2015, which accepted the coexistence agreement between the trademarks INVICTO and logotype, INVICTO LIMON and logotype and commercial slogan INVICTO LAVAZA QUE NO SE CORTA (registered), and INVICTUS (requested) in Class 3, and granted registration of the latter.

Since the same date, the following resolutions have refused trademark coexistence agreements for failing to meet the minimum requirements:

• Resolution 2239/2015, which refused the coexistence agreement between the trademarks GODREJ HIT and logotype (registered) and LABYES HIT (requested), both in Class 5, and refused registration of the latter;
• Resolution 2044/2015, which refused the coexistence agreement between the trademarks GRUPO PANEZ (registered) and PANEZ & FAESA CONSULTORES Y ASESORES DE EMPRESAS SA and logotype (requested), both in Class 35, and refused registration of the latter; and
• Resolution 594/2015, which refused the coexistence agreement between the trademarks MARTIN and logotype, MARTIN SPROCKET & GEAR INC and WHITE MARTINS (registered), and MARTIN and logotype (requested) in Classes 7 and 37, and refused registration of the latter.

The three cases above included trademark coexistence agreements that were drafted before Resolution 4665/2014 was handed down, where the parties involved did not adapt their agreements to the case law criteria. Had they done so, the coexistence agreements would most likely have been approved and the trademarks granted.

In conclusion, drawing up a trademark coexistence agreement will enable registration of a trademark in Peru if – and only if – it clearly fulfils the minimum requirements established by case law, as set down in Resolution 4665/2014.

Barreda Moller

Av Angamos Oeste 1200

Lima 18

Peru

Tel +51 1 2215 715

Fax+51 1 4411 916

Web www.barredamoller.com

Carlos Auza
Associate
[email protected]

Carlos Auza is an associate at Barreda Moller. He graduated from the Pontificia Universidad Católica Del Perú and obtained a postgraduate qualification in intellectual property, business law and international economic law. His area of particular experience covers trademark, patent, copyright, unfair competition, consumer protection and litigation-related matters.

Mr Auza is a member of the Peruvian Association of Industrial Property and Copyright. He is a member of the International Trademark Association and the Inter-American Association of Industrial Property. He is also a founding member of the Peruvian Association of Consumers. Mr Auza has authored articles on trademark matters.