INDECOPI releases binding administrative precedent on co-existence agreements

Through Resolution No 4665-2014/TPI-INDECOPI, the Administrative Court of Appeals for Intellectual Property Matters of the Peruvian Trademark Office (INDECOPI) has released a new binding administrative precedent regarding the criteria for evaluating whether a co-existence agreement may be accepted or not.

The resolution first establishes that a co-existence agreement may be valid and binding for the parties only if the latter have followed the rules of competition and those that protect consumers against deception.

The resolution also mentions that a co-existence agreement may govern the following:

• the territory on which such agreement will be applied;

• a limitation of the goods that the trademarks will cover; and

• a limitation on the presentation of the trademarks in the market (trade dress).

However, the main interest of the resolution is that the court established the minimum conditions that a co-existence agreement may contain in order to reduce as much as possible the risk of confusion among consumers. Such minimum conditions are as follows:

1. information regarding the trademarks that are covered by the agreement - that is, denomination or logo, relevant classes and description of the goods or services (as they are registered or applied for);

2. a limitation of the territory on which the agreement will be applied;

3. a limitation of the goods/services to which the trademarks will be applied - the parties may ask for a limitation of the goods/services covered by the registered trademarks/applications if necessary;

4. a limitation on the way in which the trademarks may be used and/or represented;

5. a statement of the consequences that will arise in case of breach of the agreement; and

6. a statement of the dispute resolution mechanisms to be applied.

Finally, the court clearly stated that those co-existence agreements that do not contain any of the above-mentioned minimum conditions will not be accepted. However, it is also clear that the inclusion of all the above-mentioned minimum conditions will not imply the automatic acceptance of an agreement, because INDECOPI must evaluate whether the agreement between the parties fulfils the goals sought by them.

Catherine Escobedo, BARLAW - Barrera & Asociados, Lima