Trademark Office held to have exceeded its competence


The Administrative Court has declared that a resolution of the Trademark Office was null and void on the grounds that the office had exceeded its competence under the law (Resolution 2138-2008/TPI-INDECOPI, October 2008).

On February 27 2007 an individual, Enrique Pajuelo Escobar, filed an application for the registration of the trademark LADRILLOS FORTE (and design) for goods in Class 19 of the Nice Classification (building materials for the construction industry).
In June 2007 Cementos Lima SA opposed the application. Cementos asserted that it was the owner of the trademark CL (and design) (Registration 98142) and that such design was also protected as a literary work under the name Cementín. Cementos alleged that the mark applied for was confusingly similar to both its mark and its design.
In November 2007, by means of Report 048-2007/ODA, the Copyright Office confirmed to the Trademark Office that the Cementín design was protected as a literary work under Certificate 330-2005/ODA. However, the Trademark Office rejected Cementos's opposition and allowed the registration of the mark LADRILLOS FORTE (Resolution 228857-2007/OSD-INDECOPI). The office held that the mark was not confusingly similar to Cementos's CL mark or Cementín design. With regard to the Cementín design, the office concluded that the registration of the mark would not infringe Cementos's copyright in the design.
On appeal, the Administrative Court overturned the resolution of the Trademark Office, holding that the Copyright Office is the only authority competent to determine whether a specific sign or mark infringes the copyright of a third party. Therefore, the Trademark Office had exceeded its competence in comparing the mark applied for with the Cementín design, as it was not empowered to do so under the law. 
Consequently, the court declared that the resolution of the Trademark Office was null and void on the grounds that it infringed Article 136(f) of the Andean Community Decision 486 on a Common Industrial Property Regime and Article 10(a) of Law 27444 on the General Administrative Procedure.
Gonzalo Ferrero Diez Canseco, Lema Solari & Santiváñez, Lima

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