New avenues for trademark protection
The first is the administrative channel through infringement actions filed before Peru’s patent and trademark office (INDECOPI), based on Decision 486 of the Andean Community and Legislative Decree No. 1075. The second is the judicial channel through the laws against the infringement of industrial property rights contained in the Penal Code.
To date, the administrative channel is the most used channel because of the speed of procedures and the possibility of finding an agreement to repair as far as possible the interests of injured trademark owners, because it contemplates the possibility that at the conciliation hearing the infringer would pay some sort of financial compensation for its actions.
In the administrative channel no fraud is needed to constitute an infringement. It must merely be demonstrated that the accused is responsible for the relevant act of commerce in order to prove administrative responsibility.
In the judicial channel, on the contrary, fraud of some sort is required in order to establish the responsibility of the author. This is the main difference between the two channels. The infringer’s intention to break the law must be proved when it comes to the unauthorised use of a trademark owned by a third party.
During the exercise of legal actions before the judicial channel, we have counted on the valuable support of the members of the Public Ministry and the National Police of Peru to carry out seizures of counterfeits. This has happened in the specific case of a client which is dedicated to producing helmets for mining and construction use.
“WE HAVE COUNTED ON THE VALUABLE SUPPORT OF THE MEMBERS OF THE PUBLIC MINISTRY AND THE NATIONAL POLICE OF PERU TO CARRY OUT SEIZURES OF COUNTERFEITS.”
It has registered an industrial design as well as a three-dimensional mark consisting of a particular and distinctive helmet shape. These helmets were being reproduced by a third party without authorisation for sale in an important market in the city of Lima.
After filing the complaint, we had help from the Public Ministry and the National Police (which supports the Public Ministry on this type of investigation) to carry out the corresponding inspection proceedings. During this specific intervention, carried out at the place where the helmets were manufactured, nearly 5,000 helmets were seized plus two matrices for manufacturing models which were virtually a carbon copy of the registered design and trademark.
This quick and effective action has allowed us to increase the scope of protection of the rights of our clients because in the past the judicial channel was less effective than the administrative channel due to delays in the procedural system, which unfortunately led to a huge caseload that prevented quick action.
Now, thanks to new dispositions that allow interaction between the complainant and the Public Ministry, a new door has opened to facilitate action against piracy. This is a clear cause for celebration.
