Detaining suspect goods

Peru’s Industrial Property Law allows the owner of trademarks to file an infringement procedure against merchants who use a registered trademark without authorisation. In Peru this right is recognised by means of Articles 155 and 156 of Decision 486 of the Andean Community.

Article 155

The owner of a registered trademark will have the exclusive right to prevent all third parties from engaging in the following acts without consent:

a) Using or affixing the trademark or a similar or identical distinguishing sign to products in respect of which the trademark is registered; to products connected with the services for which the trademark is registered; or to the packages, wrappings, packing, or outfittings of those products;

b) Removing or changing the trademark, once it has been placed on or affixed to the products in respect of which the trademark is registered, for commercial purposes; to products connected with the services for which it is registered; or to the packages, wrappings, packing, or outfitting of those products;

c) Manufacturing labels, packages, wrappings, packing, or such other materials as may reproduce or contain the trademark, and selling or storing such materials;

d) Using, in the course of trade, identical or similar signs to the trademark for goods or services, where such use would result in a likelihood of confusion or mistaken association with the registration owner. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed;

e) Using in the course of trade identical or similar signs to a well-known trademark with respect to any goods or services, where such use, by weakening the distinctive force or the value of that trademark for commercial or advertising purposes or by taking unfair advantage of the prestige of the trademark or of its owner, could unjustly damage the registration owner’s economic or commercial interests; and

f) Making public use of identical or similar signs to a well-known trademark, even for purposes that are non-commercial, where such use could weaken the distinctive force or value of that trademark for commercial or advertising purposes or take unfair advantage of its prestige.

Article 156

For the purposes of the provisions stipulated under paragraphs e) and f) above, the following acts, among others, shall constitute use of a trademark by a third party in the course of trade:

a) Introducing into commerce, selling, offering for sale, or distributing products or services that bear the said trademark;

b) Importing, exporting, storing, or transporting products that bear the said trademark; and

c) Using the said trademark, independently of the means of communication employed and without prejudice to such standards as may be applicable to advertising, in advertising, publications, commercial documents, or written or oral communication.

In the development of the Infringement procedures, the Peruvian administration is authorised to order precautionary measures in order to stop the counterfeit merchandise, as we might read from paragraph (d), Chapter V: Powers of investigation and of inspection visits, Article 115 from the Legislative Decree 1075.

Article 115—Powers of investigation

Without this list being exhaustive, the competent national authority shall have the following powers of investigation:

(d) To demand that natural or legal persons, as well as public or private entities, whether state or non-state, profit-making or non-profit making, adopt any measure which enables the preservation, maintenance or integrity of the documents, processes and property under investigation, and collaborate where necessary in the exercise of its functions.

Consequently, in the case of infringements based on imported merchandise that presumably holds registered trademarks, the administration, at the request of a party, may order the detention of the respective containers at the storage terminals.

This precautionary measure is fully justified since the process itself, requiring a series of steps that extend in time from the filing of the complaint until the issuance of the final resolution (nine months in our case), would enable the goods to hit the market, without detention.

To avoid this inconvenience the applicable legislation provides the authority to order the detention of the merchandise until it has been inspected at the storage place. This ensures the non-entry of the merchandise into the market as well as the obtaining of samples for verifying the use of the trademark.