We recently spoke with Cesar Prieto, founder of CAP IP CONSULTING, a Peruvian law firm which provides Intellectual Property services throughout Latin America.
Thank you, Cesar. Please tell us a little about your trademark and brand protection practice.
Our firm provides consultancy on Intellectual Property and Unfair Competition matters. We place an emphasis on effective litigation, negotiation and dispute settlement solutions. We started the company because we detected a need rarely satisfied by most legal firms of our region: with the rise of the digital economy, there is a greater demand for skilled trademark and brand protection legal services that goes beyond trademark filings only.
When should international companies seek to register and protect their trademarks in Peru?
There are different situations depending on the commercial interest of international companies. The most obvious situation is when business have a physical presence in our country or when our country has strong commercial relations with a jurisdiction where the client already operates.
Peru is a country member of the Andean Community, also comprised by Bolivia, Colombia or Ecuador. This means that trademark protection in Peru would give companies good legal leverage to commence actions in the remaining Andean country members.
The nature of economical activities and the strength of the market of origin also play important roles. For example, clients which sell their goods via e-commerce or e-tailers and receive purchase orders from customers in Peru shall protect their trademark in our country even if they do not have a physical presence in our market. For example, there is a misconception that owners of foreign service marks for real estate services would not lead to cases of trademark infringement in our country. This is wrong since the takeover of a service mark by a third party in Peru will block the original owner to franchise its service mark in Peru or in neighboring markets.
Moreover, if the real estate service mark has an origin in the the United States, the economic risk and harm would be considerable when an interloper registers the same service mark in a country with a weak economy. The trademark’s goodwill will be in jeopardy and brand value will decrease.
In short, an updated legal recommendation should include the following factors: (i) commercial interest, (ii) presence or sales in a neighboring market, (iii) nature of the good or service and, (iv) and strength of the market of origin.
What is required for a company to file a trademark opposition in Peru?
The formal requirements are the execution of a Power of Attorney (POA), which does not need any legalizations, and the payment of an official fee which approximately amounts to US$162.00
The substantial requirements depend on the type of opposition.
A standard opposition requires that:
- a previous trademark is filed or registered in Peru;
An Andean opposition demands that:
- a previous trademark is filed or registered in any other Andean Country Member such as Bolivia, Colombia or Ecuador and that a trademark application in the name of the client is applied along with the Andean opposition to show commercial interest in our market.
There are other grounds for oppositions such as the bad faith of the applicant. In this case, the opponent shall prove that the applicant knew or was in a position to know that the trademark pertained to a third party before filing the trademark application in Peru. Bad faith might be proven with direct evidence, for example, when the applicant was a former distributor of the client or with indirect evidence, e. g., when the applicant takes over a trademark which may not be famous locally, but it is already commercialized in a strong market. Take the case of PUBLIX for supermarket services, which is a trademark that may not be famous in Peru, but it is well established and commercialized in the State of Florida, United States of America.
Other grounds for opposition would be the notoriety character of the client’s trademark or when the opponent has a trademark in a country member of the Inter-American Washington Convention.
Approximately how long is the trademark opposition process?
The maximum legal term for the Trademark Office to render a decision is 9 months in both the first and the second administrative instances. This means that a trademark opposition proceeding will take 18 months approximately if an appeal is filed.
A substantial aspect but neglected by many law firms is that the Trademark Office’s definitive decision may also be challenged before the Judiciary. There are two ordinary judicial instances which may render a decision on the case in about 2 years and the Trademark Office shall necessarily comply with what is ordered in the Judicial case.
What are some risks to international companies who decide not to file a trademark opposition?
Risks are higher in a digital economy. The takeover of foreign trademarks is increasing given that e-commerce is commonplace and the knowing of foreign marks is not only simple but instantaneous.
Most interlopers may make big business by taking over foreign trademarks in Peru. They even decide to lawyer-up and create their own strategy by registering the trademark in neighboring markets. For this reason, even if the client is not currently interested in doing business in Peru, the economical harm is not only important, but, what is worse, it may increase economically and geographically in the long run.
Do you have any other helpful advice for companies regarding Peru trademark protection?
Registering a trademark in a foreign country is only the first step in the trademark protection way. What is more important is to cherry-pick the countries of commercial interest in line with the nature of the goods and services, the strength of the market of origin where the client operates and the potential of business growth which may be estimated by comparison with business made by current interlopers. Trademark protection in neighboring markets would also be required.
Trademark protection is not global, but rather a geographical need based on a country-by country or regional brand protection basis.
Editor’s Note: to learn more about protecting your trademark rights in Peru or the Andean region, contact Cesar Prieto at firstname.lastname@example.org.