Proof of use of mixed and figurative marks

The Intellectual Property Court recently issued a welcome resolution stating that when products are not covered by a registered trademark, but are similar to goods explicitly mentioned in a certificate of registration, the goods have effectively been used and therefore the registration cannot be cancelled.

The Peruvian Intellectual Property Office—INDECOPI—takes into account jurisprudence from 2005, which established this criterion, allowing trademark registrations to cover products that were not specified in the registration, but are similar to the products covered by the trademark.

Secondary modifications

There was another interesting resolution, establishing the use of a figurative trademark that was formed by some letters inside an oval, with the name of the company written on the border of the oval.

However, because of a change in the registrant’s status, the name of the company written on the border was deleted and the device was reformed using just the letters and the oval.

“Use of a trademark in a form different from that in which it was registered only with respect to details or features that do not alter its distinctive character, shall not constitute grounds for cancellation of registration for non-use, or lessen the protection afforded to the trademark.”

The Peruvian trademark office correctly understood that it was a secondary modification, and covered by Article 166 of Andean Community decision 486, which states: “Use of a trademark in a form different from that in which it was registered only with respect to details or features that do not alter its distinctive character, shall not constitute grounds for cancellation of registration for non-use, or lessen the protection afforded to the trademark.”

Likewise, in both resolutions, use was demonstrated based on the filing of catalogues that contained invoice codes and photographs of the products. It is important to mention that in the case of mixed marks, it is not enough that the invoices refer to the brand in words.

The administration has successfully carried out a detailed examination of all these elements to establish the chain of proof of use of the mark, finding that indeed both brands have been successfully used.

This is great news because the decisions establish guidelines for all market players, clarifying how figurative and mixed marks should be used in order to avoid possible cancellations. It also provides security for use of the marks and allows companies to enter the market with clear rules.

Alain C. Delion is an intellectual property partner of the international department at Estudio Delion S.R.L. He can be contacted at: acd@estudiodelion.com.pe

Fayssy C. Delion is the founding partner of Estudio Delion S.R.L. He can be contacted at: fcd@estudiodelion.com.pe