Andean Community Court of Justice issues opinion on protection of trade names


According to Peruvian and Andean Community trademark law, a trade name generally benefits from the same protection as a trademark. However, trade names do not need to be registered with the Peruvian Trademark Office (INDECOPI), as mere use on the market grants rights to the owner (contrary to trademarks, which must be registered in order for the owner to have rights). Nevertheless, certain entities seek to guarantee the protection of their trade name by requesting their registration before the INDECOPI, in addition to the evidence of use of their trade names.

In recent proceedings before the Eighth Civil Court Specialised in the Nullity of Administrative Resolutions, the issue was the protection that may be granted to a trade name. The INDECOPI at first instance and the Administrative Court of Appeals at second instance had issued resolutions stating that trade name protection may be granted for a particular territory (ie, where use has been proven). Therefore, if a trade name has not been used in the whole of the Peruvian territory, the authorities will grant protection only in the part of the territory where use has been proven.

The trade name owner did not agree with the Administrative Court of Appeals' decision and decided to request the nullity of that decision before the civil courts. In administrative proceedings before the Administrative Court of Appeals, if any of the parties do not agree with the second instance resolution, they may initiate a civil action requesting the nullity of the resolution. In addition, during the proceedings the civil courts may request a prejudicial interpretation by the Andean Community Court of Justice to clarify any provisions of Andean Community Decision No 486 Establishing the Common Industrial Property Regime.

In the present case, the Eighth Civil Court asked the Andean Community Court of Justice for its opinion with respect to the recognition of IP rights in trade names. In resolution No 99-IP-2014, the ACCJ stated as follows:

  1. The owner of a trade name must prove its use in commerce.
  2. Invoices, accounting documents and audit certificates may be filed in proceedings to be considered as evidence of use of a trade name.
  3. Use of a trade name may also be proven by providing documents related to advertising, sales, publications, distribution, importation, exportation, storage and transport, and all types of commercial documents.
  4. Trade names benefit from a special protection as they are distinctive signs derived from commercial reality.
  5. Taking into consideration the changeability of today's commercial and business activities, the protection of a trade name cannot be assigned to a particular part of a territory, as this may constitute a violation of trade name rights. A trade name should be recognised and protected in the whole territory of a country, and not only in part of it.
  6. A valid trade name may be relied on in opposition proceedings against a trademark registration: a trade name owner may prove use of the trade name before the date of application of the opposed trademark; once use has been proved, the INDECOPI will need to determine whether there is a likelihood of confusion between the distinctive signs.

As the ACCJ issued an opinion in favour of trade name owners, it is expected that the Eighth Civil Court will issue a resolution favourable to the trade name owner in the present case.

Adriana Barrera, BARLAW - Barrera & Asociados, Lima

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