Taking action against fakes
Recently, they have taken action on trademark infringements in record time.
Last year, Taiwan’s Chi Yong Trading, a manufacturer and merchant of yarn, textiles and clothes, filed an infringement action over its trademark ASATEX (Application No. 395052). It claimed that its rights were being infringed by the high volume of counterfeit sewing thread being imported under the ASATEX mark.
On July 21, 2009, a Peruvian company, Dolphins EIRL, imported about three tons of thread. Two days later, the infringement action was filed at INDECOPI. The response was instantaneous, and INDECOPI officers stopped the counterfeit merchandise at customs the same day, seizing huge numbers of products, which were taken from customs and stored.
It is important to emphasise that current regulations allow 30 working days to evaluate an infringement action, but in this case, INDECOPI conducted an official inspection on the same day that the action was filed.
The case is still pending, but if an infringement is found, the products will be destroyed and the infringer will be obliged to commit to not use the ASATEX mark in the future. It will also have to pay the trademark owner’s costs.
“Current regulations allow 30 working days to evaluate and infringement action."
In another welcome development, Peruvian customs has begun to employ ‘border measures’ in its fight against piracy and counterfeiting. These speed up cases involving the import or export of counterfeit products. In fact, since Peru implemented its free trade agreement with the United States, border measures have been extended to goods in transit, meaning that customs’ authorities can take action against infringers even if the product is not destined for the Peruvian market.
If a product infringes trademark, copyright or any other related rights in Peru, customs authorities can immobilise it for 10 days ex officio or by request of any third party that proves their IP rights are being affected.
In addition, the customs administration has established a voluntary registry of intellectual property rights owners and their respective legal representatives or attorneys.
There will also be an electronic information exchange developed for IP rights holders.
The early success of INDECOPI and customs enforcement efforts demonstrates that they are ready to act in a fast and efficient way to stop threats against industrial property rights by those who use third parties’ trademarks. These efforts have resulted in increased legal security, which in turn encourages investment and contributes to the growth of the whole Peruvian market.
Lilie Delion is a senior manager at Estudio Delion. She can be contacted at: lcd@estudiodelion.com.pe
