COPYRIGHT fails to make its mark for paper

Peru

The Administrative Court has upheld a Trademark Office (TO) decision to refuse to register COPYRIGHT as a word and design mark on the grounds, among other things, that it lacked distinctiveness (Case 184765-2003).

Swedish firm Ekman & Co AB applied to register the mark COPYRIGHT in Class 16 of the Nice Classification for photocopying and facsimile paper. The mark consisted of the word 'copy' appearing on top of the word 'right'. Both were contained in an incomplete circle, which in turn was contained in a larger circle. The TO refused the registration on the basis that it lacked distinctiveness.

On appeal, the Administrative Court affirmed the TO's decision. It held that it could not grant exclusive rights in the word 'copyright' as Article 99(b) of the Peruvian Copyright Law provides that authors of creative works must indicate in each copy of the work, among other things, that copyright is reserved. The court also found that the mark lacked distinctiveness and was thus unregistrable pursuant to Article 135(b) of Andean Community Decision 486 on a Common Intellectual Property Regime. This was because (i) the English word 'copyright' means 'property of a creative work', and (ii) Ekman's mark resembled the famous copyright symbol (©).

Lastly, the court mentioned that the fact that the mark had been registered in the United Kingdom did not oblige the Administrative Court to register it in Peru. This is because each application must be analyzed to determine whether it complies with the requirements stipulated in the applicable regulations for trademark registration in effect in Peru.

Gonzalo Ferrero, Ferrero Diez Canseco & Asociados, Lima

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