Name of comedy film and stand-up show held to be notorious

Asu Mare is the name of a Peruvian comedy film, which is considered to be the most seen national film in Peru. According to Peruvian and international media, it is a phenomenon in the history of the Peruvian film industry.

Constructora Leuba SAC obtained a registration for the trademark ASU MARE to cover goods in Class 16. Subsequently, Mr Carlos Alcantara, the producer and creator of the stand-up comedy show and film Asu Mare, filed a nullity action against the registration for ASU MARE in Class 16, requesting that the Peruvian Trademark Office (PTO) cancel such registration.

Alcantara stated that Asu Mare is a comedy film, which is an adaptation of the stand-up comedy show of the same name that Alcantara starred in. In April 2013 the film was first released in all Peruvian cinemas and it reached a record number of 2,347,086 spectators. The film obtained several prizes and recognitions. Alcantara stated that the name and the film are protected by copyright law, as the name Asu Mare was first created by Alcantara as the title of a stand-up comedy show in 2006. Therefore, Alcantara requested that the PTO declare ASU MARE to be a notorious trademark for services in Class 41.

Further, Alcantara stated that Constructora Leuba intended to benefit unfairly from the fame of Asu Mare to manufacture and commercialise merchandising goods related to the film and that Constructora Leuba had acted in bad faith.

In contrast, Constructora Leuba stated that 'Asu Mare' is a popular expression that has not been created by Alcantara; it is commonly used and is part of the Peruvian language.

According to the Peruvian Trademark Statute, a trademark cannot be registered if it infringes third-party copyright. Following that provision, the PTO first analysed whether Asu Mare was protected by copyright law. The PTO thus requested a report from the Peruvian Copyright Office, which stated that the name is not protected by copyright law as it lacks originality.

The PTO then considered whether ASU MARE could be considered as a notorious trademark which transcends the rules of territoriality, specialty and registry, as notorious trademarks benefit from a broader protection. With respect to notoriety, the legal precedent states that the notoriety of a trademark must be proven by the party that invokes such notoriety. In this case, Alcantara had to prove the notoriety of the ASU MARE mark. Based on the evidence filed, the PTO declared that ASU MARE was notorious for services in Class 41.

As ASU MARE had been declared notorious, it was then necessary to determine whether ASU MARE for goods in Class 16 infringed the ASU MARE mark for services in Class 41.

The PTO stated that the conflicting trademarks were graphically and phonetically similar and that, even though the goods and services in Classes 16 and 41 were not related, it had been proven that the ASU MARE mark in Class 16 was registered to infringe the notorious trademark ASU MARE. Indeed, the mark was registered in bad faith with the intention of benefiting unfairly from the notorious trademark ASU MARE, as the trademark in Class 16 was intended to be used in connection with merchandising articles related to the well-know film Asu Mare.

Constructora Leuba has not filed an appeal.

Adriana Barrera, BARLAW - Barrera & Asociados, Lima