Written by Anamaria Correal, Trademark Attorney
Over recent decades, many countries in Latin America have enjoyed consistent economic growth, poverty reduction and political stabilization. Many investors are jumping at the opportunity to invest in LATAM, predominantly in those countries that have committed to developing efficient market systems. Peru is a consistently popular destination for investment in the region. If you are planning to enter to the Peruvian market or to launch a product or service, it is important to build an IP strategy in the early stages of your business including considering trademarks registration. This article will focus on how to protect your trademarks in Peru.
What is a trademark?
A trademark (TM) is a sign which is used to identify and distinguish the goods and services of one enterprise from those of other enterprises. In Peru a trademark can be a phrase, word, letter, name, numeric device, logo, colour, symbol, picture, aspect of packaging or shape, and even a scent or sound.
Registration of a trademark
Peru is a first-to-file jurisdiction which means that the person who first files an application to register a trademark, is normally granted the rights over the said trademark.
In order to protect your trademark, you must register it locally. Registrations of a trademark in Peru must be directly with the National Institute for the Defense of Competition and Intellectual Property (INDECOPI). Although registering a trademark is not mandatory or a requirement to start commercial activities, it is the most effective way to prevent others from copying your trademark and prestige.
For international applicants, it is indispensable to perform trademark registration in Peru through an agent (any natural or legal person residing in Peru). However, it is recommended to use a registered TM Peruvian Attorney who can advise you on your brand protection strategy, including preparing the trademark application, advising on the use of your trademark and similar trademarks, and enforcing and opposing trademarks.
Enforcement and Remedies
A trademark owner can take legal action against third parties for the unauthorised use of their registered trademarks and can request the following:
- Nullity action.
- The cessation of all infringing acts.
- Withdrawal of all infringing products from the market.
- Destruction of the products, or the temporary or permanent closure of the infringing business.
- A prohibition against import or export of the infringing products.
Cancellation of a trademark
Pursuant to the Decision 486 of the Andean Community, in Peru a trademark might be cancelled where it can be proved that the owner, licensee or other authorised party has not used the trademark in any of the member countries of the Andean Community, including Peru, for three consecutive years. Such period must start at least three years from the registration date.
What is the Andean community?
The Andean Community of Nations (CAN) is a regional association focused on eliminating trade barriers that includes Peru, Colombia, Bolivia, and Ecuador. The CAN adopted the Decision 486, which regulates intellectual property, including trademarks.
A trademark registration or application in any of the CAN countries provides applicants with a number of advantages, for example:
- The possibility of trademark holders to file oppositions in other countries of the Andean community. Article 147 of the Decision 486, states that a trademark registration or application in any of the above CAN countries gives rights to file an opposition. However, a trademark application should be filed in that country simultaneously with the opposition.
- The use of the trademark in one of the CAN countries can be considered effective use in the other countries as well as pointed out in Article 165 of the Andean Decision.
Is Peru a member of the Madrid Protocol?
While Peru is currently considering joining the Madrid Protocol, at present it is not a party to either the Madrid Agreement or the Madrid Protocol. Within the region, only Brazil, Colombia, Mexico, Cuba and Chile are signatories. The Madrid System is a cost-effective solution for registering trademarks which now allows for protection in up to 128 countries by filling one application and paying one set of fees.
Conclusion
Peru is one of the fastest-growing economies in Latin America, and being able to establish a business in LATAM is an opportunity waiting to happen. Protecting your trademarks, it is the most effective way to defend your brand identity, because without it your TM may be exposed to misuse or adoption by third parties. Harris Gomez Group (HGG) has agents in Peru and in other country regions, our legal team can assist you with trademark registration in Peru as well as around the world. Contact our legal team to find out more how we can help to protect your trademarks and support you in your business.
