Counterfeiter's registration for confusingly similar mark cancelled


The Peruvian Trademark Office (INDECOPI) has declared that the stylised trademark MIROCA M, registered in the name of defendant Yeni Laura Calzado Justo, was null on the ground that it was confusingly similar to the stylised trademarks WILSON and W, registered in the name of Wilson Sporting Goods Co.

In 2011 Wilson filed a criminal complaint, before the public prosecutor specialised in IP rights crimes, against the defendant for manufacturing and commercialising bags bearing the stylised MIROCA M mark, which was allegedly almost identical to the stylised WILSON and W marks owned by Wilson. A raid was conducted pursuant to the filing of the complaint and the allegedly infringing goods were seized.

In her defence, the defendant stated that the seized goods should be released because she owned a trademark registration for the stylised trademark MIROCA M. Wilson claimed that it was clear that the 'M' in 'Miroca' looked like its stylised 'W', and that the stylised 'M', which resembled a 'W', was similar to Wilson's 'W'.  Wilson argued that this could mislead consumers into thinking that bags marked with the stylised 'M' were products authorised by Wilson.

The prosecutor ordered the release of all bags seized, as the MIROCA M mark was duly registered.

Wilson decided to file a nullity action against the trademark registration on the ground that it had been granted in violation of the Peruvian Trademark Statute, which states that a trademark may not be registered if it is confusingly similar to an earlier registered trademark.

It is clear that, when INDECOPI analysed the trademark application for the stylised trademark MIROCA M, it had omitted to compare it with Wilson's registered trademarks according to the mandate of the law.

At first instance, INDECOPI rejected Wilson's nullity action and maintained the trademark registration that it had previously granted. Wilson appealed.

The Administrative Court of Appeals declared that INDECOPI's resolution was void and requested that the latter proceed with a broader and more detailed analysis of the case. INDECOPI subsequently annulled the trademark registration at issue, as it recognised that the defendant's trademark was confusingly similar to Wilson's trademarks.

The defendant did not file an appeal so the case is now closed.

Adriana Barrera, BARLAW - Barrera & Asociados, Lima

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