Trademark Office squashes Caterpillar's infringement claim

Peru

US company Caterpillar Inc, a leading manufacturer and provider of heavy construction equipment, has lost a trademark infringement case against Peruvian company Piezas y Tractores SA (P&T). The Peruvian Trademark Office held that P&T's use of Caterpillar's CAT and CATERPILLAR trademarks for advertisement purposes complies with Andean Community law.

P&T uses the US company's marks to advertise that it sells CAT and CATERPILLAR marked machines and spare parts in Peru, and services Caterpillar equipment. Caterpillar filed a trademark infringement action, relying on Article 155 of Andean Community Decision 486 on a Common Intellectual Property Regime which states that:

"The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from [...] using or affixing the trademark [...] to products connected with the services for which the trademark is registered or to the packages, wrappings, packing or out-fittings of those products."

The Trademark Office ruled in P&T's favour on the basis that Article 157 of Decision 486 explicitly provides for several exceptions to Article 155:

"Trademark registration shall not confer on the owner the right to prevent a third party, where proceeding in good faith, from using the trademark to announce, even in advertising using brand comparisons, offer for sale, or advertise the existence or availability of lawfully trademarked goods or services [...] provided that such use is confined to the purpose of informing the public and is unlikely to lead to confusion over the corporate origin of the goods or services concerned."

The Trademark Office considered that (i) P&T's use of the CAT and CATERPILLAR marks is in conformity with the conditions of Article 157, and (ii) consumer confusion is unlikely. Hence, P&T is not guilty of trademark infringement.

Gonzalo Ferrero, Ferrero Diez Canseco & Asociados, Lima

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