1 December 2010Jurisdiction reportsAlain C. Delion

The judiciary in action at last

The case involved an opposition filed by one of our clients, who has a trademark registered in Peru under class 30, against a nearly identical Peruvian trademark application in class 32.

There is a relationship between the goods in classes 30 and 32, since products such as biscuits, bread, cookies and candies, covered by class 30, are sold in the same places as some of the goods protected by class 32 (cakes, for example). They are also consumed in similar situations, such as children’s parties.

The reason for the surprise is that, in most cases, the judiciary confirms INDECOPI’s second instance decisions, perhaps because of their ignorance of the relevant administrative rules—in this case, decision 486 of the Andean Community.

However, in this case, the Superior Court found (contrary to INDECOPI) that there was a relationship between the goods in classes 30 and 32.

In effect, the court stated that “both types of products belong to a large sort of alimentary sweet flavour goods for human consumption and they are part of the half-day or mid-afternoon snacks”.

“This shows a new trend that is useful for facilitating market management and operation, where the judiciary understands that on trade issues, it is very important to have useful guidance.”

It added: “In spite of the fact that the goal of goods in class 32 is to quench thirst, class 32 products and confectionery goods in class 30 may both aim to satisfy consumer taste at any time as well as for special celebrations. In consequence, both signs potentially cover products under the same banner, therefore in this case, there is a competitive connection.” Moreover, “although the products in this case are not identical, it is important to take into account that confectioneries are complemented by a refreshing drink, which can be found at the same store, warehouse or event, so it can be assumed that the average consumer would think both products have the same entrepreneurial origin”.

For these reasons, the judges found that there were sufficient elements of competitive connections capable of generating likelihood of confusion in consumers. This meant that it is not possible for the two signs to coexist in the market, taking into account the grounds for prohibition of registration in article 136 of decision 486 of the Andean Community.

In this resolution, the judicial channel, in contrast to past practice, has ordered: the annulment of the rejection of the opposition; denial of the registration of the applied mark; and grant of the registration on behalf of our client in class 32.

This shows a new trend that is useful for facilitating market management and operation, where the judiciary understands that on trade issues, it is very important to have useful guidance. They have decided to correct the errors of previous judgments, and are promoting legal certainty for all market participants.

Hopefully, this is the beginning of a change in the judicial tendency to resolve administrative issues. It will also ensure that they are really undertaking an examination of the issues that require judicial decisions—a touchstone for the success of the market as well as for attracting investment to Peru.

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

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