Famous marks remain well known, rules Supreme Court


In Mars Inc v Corporacion Miski SA (Case 128-00), the Civil Chamber of the Supreme Court has reversed a lower court's decision suggesting that trademark notoriety is limited and must be assessed dynamically as circumstances change. The Supreme Court held that trademark notoriety is usually static and when a famous mark remains in the marketplace, there is no need to demonstrate continually that the mark is still well known.

Corporacion Miski, a Peruvian company, applied to register the letter 'M' and related design as a trademark with the Trademark Office of Peru (TO). Mars, the consumer food multinational, opposed the application on the grounds that it had previously registered a number of marks, including M&M'S.

In 1994 the TO declared the M&M'S mark well known. However, after considering Mars's opposition, the TO stated that trademark notoriety is dynamic and must be assessed on a regular basis to keep up with changing circumstances. It reasoned, therefore, that it was required to re-examine the notoriety of M&M'S because (i) the original declaration of notoriety had been made several years earlier, and (ii) Mars had failed to provide any new evidence of notoriety. The TO allowed Miski's application, concluding that the M&M'S mark was no longer well known and Miski's proposed registration was not graphically or phonetically similar to any of Mars's marks. Mars appealed but the Administrative Court upheld the TO's decision, backing its analysis of the concept of dynamism in relation to the notoriety of trademarks.

On appeal again, this time to the Supreme Court, Mars was successful. The Supreme Court ordered the cancellation of Miski's M trademark, holding that (i) the M&M'S mark is well known and, (ii) since Miski's mark was made up of an 'M' in a similar font to Mars's mark, there was a likelihood of consumer confusion. The Supreme Court rejected the Administrative Court and TO's guidelines for assessing the fame of a mark. It held that the concept of dynamism is alien to the law on trademark notoriety. There is no need, said the court, to analyze whether or not a trademark is well known on a regular basis. It further stated that, where only a short period of time has elapsed from the date of the previous declaration of notoriety, it is unlikely that the relevant mark would have lost its status in that time. More specifically, the court held that, if a mark declared as famous remains in the marketplace, there is no need to demonstrate, in subsequent proceedings, that it is still well known.

José Barreda, Barreda Moller, Lima

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