Trade and Service Marks
– 1993 Political Constitution (Article 2, subsection 8); Civil Code (Articles 884, 886.6, 2011, 2013, 2014 and 2015); Penal Code (Articles 223 and 224) and Penal Procedural Code (Article 303).
– Decision 486 of the Andean Community (Cartagena Agreement), in force since December 1, 2000.
– Legislative Decree No. 1075 Approving the Supplementary Provisions of Decision No. 486 of the Andean Community, published in in the official gazette El Peruano on June 28, 2008.
– Legislative Decree No. 1397 on Amendments to Legislative Decree No. 1075, published in the official gazette El Peruano on September 7, 2018.
Membership in International Conventions
– Pan-American Convention of Washington (1929).
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 4, 1980.
– WTO’s TRIPS Agreement (ADPIC), since January 1, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 11, 1995.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act, since May 16, 2005.
– Trademark Law Treaty, since November 6, 2009.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 30, 2010.
– Singapore Treaty on the Law of Trademarks, since December 27, 2018.
Applicant: any physical person, corporation or company.
Foreigners and nationals not living in the country: must appoint a representative residing in the country.
Trademarks of foreigners: same rights as for nationals.
Types of marks: trademarks, service marks, perceptible by sight (word, logo or device), smell or sound, bi-dimensional or tri-dimensional, collective marks, commercial slogans, certification marks, trade names, ensigns, geographical indications: (a) denominations of origin and (b) indications of origin.
Definition: in order for a trade or service mark to be registered, it must be sufficiently distinctive, susceptible to be graphically represented and perceptible through senses.
A commercial slogan is defined as a word or phrase or caption used as a trademark complement. It is recordable only to be used with an applied for or registered trademark.
Trade names: are protected without deposit or registration; protection is granted by use.
Non-recordable marks: (a) those which lack distinctiveness; (b) those consisting in the usual shapes of the product or its packaging or in a shape imposed by the nature or the function of the good or service involved; (c) those consisting of a form which gives the good or service to which it is applied a functional or technical advantage; (d) those consisting exclusively in a sign or indication which is used in the market to name or to describe the species, quality, quantity, destination, value, place of origin, production season or other data, characteristics or information about the goods or services for which it is to be used, including the laudatory expressions referred to such goods or services; (e) those consisting exclusively in a sign or indication which, in the language of the country, is a common or generic name for the goods or services involved; (f) those consisting of a single color, which is not defined in a specific shape; (g) those which may deceive the market or the public particularly as regards to the nature, origin, method of manufacture, characteristics or suitability for use with the goods or services involved; (h) those which reproduce or imitate or contain a protected denomination of origin for the same or different goods or services when the use can cause a risk of confusion or association with the denomination or involve an unfair exploitation of its notoriety; (i) those which contain a denomination of origin protected for wines and spirituous drinks; (j) those which consist in a national or foreign geographical indication liable to lead the public into error regarding the goods or services for which they are used; (k) those which without permission of the competent authority reproduce or imitate names, coats of arms (escudos), flags or other emblems, acronyms, names or abbreviated names of any state, or any international organization (in any case recordable only when they constitute an auxiliary element to the main feature); (l) signs which without permission reproduce or imitate signs of compliance with technical standards, unless their registration is requested by the national competent organization of normalization and quality of an Andean Community country member (Bolivia, Colombia, Ecuador, Peru and/or Venezuela); (m) those which reproduce, imitate or include a denomination of a protected plant variety if the sign is destined to goods or services related to such variety or if its use will cause confusion or association with the plant variety; (n) those which are against the law, morals, public order or good manners; (o) when their use in the market illegally affects a third party.
Distinctiveness: is inherent or can be acquired by use (secondary meaning). Signs cannot be registered when their use in the market illegally affects a third party. Despite of what has been established in section (a), (d), (e) and (f), a sign can be registered if the applicant is constantly using it in an Andean Community Country and if by effects of such use, the sign has acquired a distinctive attitude regarding the goods or services to which they are applied.
Well-known distinctive signs: to determine whether a distinctive sign is well-known, the following are taken into consideration: (a) the extent to which consumers in the corresponding sector know it as a distinctive sign; (b) the intensity and the area covered by advertising or promotion; (c) the duration, intensity and geographic diffusion of its use inside or outside any Andean Community Country; (d) an analysis of the production and marketing of the goods or services which it identifies; (e) the distinctiveness degree inherent to or acquired by the sign; (f) the accountancy value of the sign as a business asset; (g) the amount of requests of people interested in the obtaining of franchising or license of the sign in a determined country; (h) the existence of important manufacturing, selling or storage activities made by the holder of the sign in the Andean Community Country in which protection is sought; (i) the international commerce aspects; (j) the existence and age of any registration or application of the distinctive signs in the member country or abroad.
Collective marks: the associations of producers, manufacturers, service suppliers, organizations or groups of individuals legally established, may apply for the registration of collective trademarks, to distinguish the origin or any other common characteristic of their goods or services in the market.
Certification mark: authenticates the origin, compound, quality and other features of the goods or services. The application for the registration must include a copy of the rules of use that indicate the goods or services certified by the holder, define the characteristics guaranteed by the presence of the mark and describe the manner in which those characteristics will be controlled before and after the granting of the authorization of use.
Classification: Nice International Classification of Goods and Services (11th Edition).
Multi-class applications: accepted under Legislative Decree 1075, Section 58, in force since February 1, 2009 and are conditional to the payment of one official fee per class.
Territory covered: Republic of Peru.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, signed by an authorized representative of the applicant. The document must show the title or position of the signer;
2. The trademark whose registration is requested;
3. The express indication of the products or services for which the registration is requested;
4. If necessary, attach the evidence proving the effective use in the market of the commercial name whose registration is requested, for each of the activities to be distinguished.
Electronic filing: enabled since April 2020 for users to send documents through the virtual reception desk on the website of INDECOPI.
Electronic signatures: are accepted for writs by the virtual reception desk.
For a change of name or address:
1. Power of attorney mentioning the new name or address; a scanned copy is sufficient.
Amendment of application: the initial application can be modified by the applicant only with regard to secondary aspects. The applicant can also eliminate or restrict the main specified goods or services.
Examination: formal and substantive. The substantive examination is conducted after all the formal requirements have been met.
Letters of consent: are not accepted. However, the applicant can prepare and file a Coexistence Agreement to overcome citations based on prior evaluation of specialist. The agreement is not automatically accepted because the PTO will have to analyze its content according to the general interest of the public consumer.
Opposition: whoever has a legitimate interest will be able to file a grounded opposition that may lessen the trademark registration, within thirty working days following the publication in the Official Gazette.
Disputes about ownership: must take place during the procedure.
Application kept secret: the application is kept secret before the official publication and is open to public examination after its publication.
Appeal or reconsideration: an appeal or reconsideration must successively be filed within fifteen working days from the reception of the resolution and/or decision of the authority who resolves the litigation.
Publication: one publication is made in the electronic official gazette "El Peruano", without incurring extra charges.
Correction of registration: only regarding material errors.
Delivery of the certificate: approximately three or four months (in digital format) from the date of the application.
Duration: ten years following the granting of the rights.
Renewal: a registration may be renewed for a similar period, within the last six months of validity (takes approximately one month).
Term of grace for renewal: six months after the due date (the registration will be fully in force during this term).
User rights: the exclusive rights to use a trademark are obtained by registering it with the competent national office. A trademark registration gives its holder the right to act against any third party who, without his/her consent, uses the mark for goods or services which are identical or similar to those for which the trademark has been registered.
Obligation of use: a registered mark must be used as registered or if modifications of secondary aspects do not alter its distinctive character. A trademark is used when the goods or services for which it is registered have been introduced in commerce and when they are available on the market and identified by their corresponding features, considering the nature of the goods and services and the ways of market trading. The use of the mark different from how it was registered (only for elements that do not alter its distinctive character) would not be a reason to cancel its registration for non-use, nor would it reduce the protection of the mark.
Cancellation for non-use: if not used, it may be cancelled by request of any interested third party, if without justified reason, the trademark has not been used by the holder or his licensee during the three consecutive years prior to the date in which the cancellation action is initiated. Cancellation for non-use cannot be filed within the three years after the granting of the trademark. Cancellation for non-use can also be requested as a protection in case of infringement, opposition (observation) or nullification filed against any trademark. The individual who gets a resolution of cancellation in his favor has a preferential right to register the distinctive sign, provided he requests it within the three months following the date of cancellation. Partial cancellation is also possible.
Valid use of a trademark also includes: regularity in the production or sale, inventories of merchandises, certified by an auditor, for a minimum of one year before the cancellation action is initiated; commercial materials such as invoices, inventories, stationery, used at least one year before the cancellation action is initiated; and/or any other suitable fact that proves satisfactorily the use of the mark. The proof of the use is the responsibility of the holder.
Non-use does not lead to cancellation of the mark when: used by a person authorized by the holder although the authorization has not been registered with the competent office; genuine goods, marked with the registered trademark, have been introduced and distributed in the market by traders or importers different from the holder; if non-use is due to force majeure, fortuitous case or restrictions on the import or other official requirements imposed to the goods and/or services protected by the mark.
Licenses: the recordal of license agreements is not mandatory.
Assignment: assignments and transfers carried out in keeping with each Andean Community member country, must be recorded by means of a written contract or agreement.
Modification of Protection after Registration
Modification of the trademark: not possible (possible only by filing a new application).
Changes in the list of goods: the limitation of goods may be requested, but the augmentation of new goods is not possible, and a new application would be needed.
Right of prior user: no provision.
Nullification: ex officio, or at request of a party, if the registration was granted in violation of any of the provisions of Decision 486 or the internal law; or if the registration was granted based on data or documents which are false or inaccurate; or if the registration was obtained in bad faith, inter alia.
Validation of invalidated mark: not possible.
Provision for restoration: no provision.
Registration of invalidated marks: invalidated trademarks can be filed again when the cause of invalidation no longer exists.
Infringement and penalties: are considered as serious infringements: usurpation, falsification or imitation, and any act of disloyal competition. The competent office shall take the measures required to end the infringement, in particular the withdrawal of the goods from the market, the end of advertising, the seizure and destruction of the marks or labels of the goods where they are used, closing of the infringing business or any other appropriate measure, including the imposing of a fine depending on the seriousness of the infringement, without prejudice to any civil or penal action that may be applicable.