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Decree-Law 1092/2008 enables the National Superintendence of Customs and Tax Administration (SUNAT) to act in regard to IP rights. The decree-law applies when it is presumed that goods intended for export, import or transit are pirated (infringing copyright or a related right) or counterfeit (infringing a trademark).
The following international agreements apply in Peru:
- the Agreement on Trade-Related Aspects of IP Rights, particularly Part III – Observance of IP Rights, Section 4; and
- the Peru-US Trade Promotion Agreement, particularly Chapter 16 – IP Rights, Article 16.11 – Observance of IP Rights: Special Requirements Related to Border Measures and Limitations to Liability of the Service Providers.
The following national legislation applies:
- Decree-Law 1092/2008 issued on June 27 2008 approving border measures for the protection of copyright or related rights and trademark rights;
- Supreme Decree 3-2009-EF on Decree-Law 1092/2008 approving border measures for the protection of copyright or related rights and trademark rights;
- Resolution 29-2010/SUNAT/A of the National Deputy Superintendence of Customs approving specific procedures on the application of border measures (INTA-PE.00.12 (V 1); in force on February 1 2010, with the exception of Section VII(B), which entered into force on October 4 2010);
- Supreme Decree 31-2009-EF approving the Table of Sanctions Applicable to Infringements foreseen in the General Customs Law (2009);
- Law 28008 on Customs Offences (2003); and
- Supreme Decree 121-2003-EF approving the Regulation of the Law on Customs Offences (2003).
The Peru-US Free Trade Agreement entered into force on February 1 2009. In order to meet the agreement’s commitments on border measures, the government issued Decree-Law 1092/2008 to enable the National Superintendence of Customs and Tax Administration (SUNAT) to act in regard to IP rights.
The decree-law applies when it is presumed that goods intended for export, import or transit are pirated (infringing copyright or a related right) or counterfeit (infringing a trademark). Small quantities of goods without commercial character and forming part of a traveller’s personal luggage are excluded from the scope of the decree-law, as are goods sent in small consignments that are not significant to Peru’s economy (not exceeding the declared value of $200).
SUNAT may apply border measures at the request of an interested party or ex officio. SUNAT is responsible for enforcing the customs legislation, and the Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (INDECOPI) and the courts are responsible for determining whether goods are counterfeit or pirated.
Procedure at request of interested party
A natural or legal person may file an application with SUNAT asking it to suspend the release of goods. The law enables a rights holder to file such application when it suspects the existence of merchandise bearing counterfeit or confusingly similar trademarks or pirated goods that infringe copyright.
SUNAT will suspend proceedings once it has verified ownership of the right. The rights holder must submit to SUNAT a written request containing:
- information identifying it as the applicant and the rights holder;
- a power of attorney, if necessary;
- a description of the allegedly infringing goods; and
- any other relevant information, such as a guarantee document and information on the importer or exporter.
If all of the legal conditions are fulfilled, within three working days of filing, SUNAT will notify the applicant of the suspension of release, including the name and address of the party responsible for the goods and the quantity of the goods.
Article 8 of Decree-Law 1092 provides that the suspension lasts for a maximum of 10 working days from the date of notification. It can be extended for a further 10-day period only if the applicant demonstrates that it has initiated an infringement action or a criminal case. If the competent authority (either INDECOPI or the court) does not issue a preliminary measure to withhold the goods within that term, SUNAT will remove the suspension and processing will follow.
SUNAT may require the applicant to provide security in order to cover any damages that may be caused to the exporter, importer or consignee. This security will be executed immediately if the competent authority determines that the suspended goods are not infringing.
Procedure ex officio
SUNAT may initiate border measures ex officio to suspend the release of counterfeit or pirated goods. If release of the goods is suspended, the rights holder or its authorised representative is notified and has three working days to demonstrate that it has initiated infringement proceedings or a criminal case. The process, requirements and suspension term are the same as for a suspension initiated at the request of an interested party.
Request of voluntary registration of a trademark before SUNAT
Supreme Decree 003-2009 implements the voluntary registration of rights holders and their representatives as set out in Decree-Law 1092. The process for this registration is as follows:
- The owner of a trademark or copyright or its representative can register voluntarily with SUNAT in order to request the suspension of release of suspected infringing merchandise. The application for registration must include:
- details of the rights holder and its representative, and a copy of the power of attorney;
- details of the right to be registered; and
- the type of right.
- The customs officer designated by the Intendencia Nacional de Tecnica Aduanera checks whether the application contains the information specified in Article 1 of Resolution 29-2010/SUNAT/A. If the officer notices any omissions, the applicant is notified and has five working days from receipt of the documentation to correct the application.
- Once the application is correct, the officer requests information from INDECOPI in order to validate the request. If the information is inconsistent, the customs officer notifies the applicant, which has five days to remedy it. If the officer is satisfied, within seven working days of receiving INDECOPI’s opinion the officer will record all the relevant information.
INDECOPI must provide SUNAT with access to records relating to trademark rights, copyright and related rights. A registration is valid for one year and must be renewed by the rights holder or its representative annually within 30 working days of expiry. In order to renew a registration, the applicant files an application including any updated information, and a customs officer evaluates and renews the registration. Failure to renew results in expiry of the voluntary registration.
In Peru, IP infringement offences are set out in the Penal Code, including offences relating to patents, industrial designs and utility models. With respect to trademarks, Article 222(d) of the Criminal Code states that:
It shall be punished by imprisonment for not less than two nor more than five years, with a sixty to three hundred sixty-five days fine and disqualification under Article 36, paragraph 4) taking into consideration the seriousness of the offense and the value of the damages caused, who in violation of the rules and industrial property rights stores, manufactures, uses for commercial purposes, offers, distributes, sells, imports or exports wholly or in part…
d. A product or service that uses an unregistered trademark either identical or similar to a trademark registered in the country.
Article 223 refers specifically to trademarks. The presumption rests against a party that, in infringing the rules on industrial property:
- manufactures, markets, distributes or stores labels, seals or packages that bear a registered trademark;
- removes or uses labels, seals or packages containing an original trademark for use on products of different origin; or
- packages or markets goods using containers bearing a third party’s trademark.
With regard to the products resulting from a crime, under Article 224 of the code a judge may order, at the request of the Public Ministry, that the goods be preventively seized or that relevant documents (eg, minutes and accounting books) be provided. The judge may also order a raid at the place where the crime was committed. Products of illegal origin will be seized and destroyed or, in exceptional cases approved by the judge, may be donated to a suitable institution.
Article 225 provides that a person committing an offence can be imprisoned for between two and five years, as well as being fined and disqualified.
The criminal proceeding begins with the police investigation. At the verification stage, the facts are checked, verification minutes are issued and samples are taken. In some cases, products bearing counterfeit trademarks are seized. Following the police report, a criminal complaint is formalised with the Public Ministry as follows:
- The case is initiated;
- The Public Ministry requests a technical report from INDECOPI on the counterfeit trademarks;
- Subpoenas are issued; and
- The defendant is called to testify.
The provincial criminal district attorney brings charges after analysing the facts and verifying the applicable penal clause. The parties’ counsel then present their arguments and the criminal court issues its judgment. A party which is unhappy with the judgment can then file an appeal. Article 7 of Decree-Law 124 issued on June 12 1981 (summary criminal proceedings) states that: “The judgment can be appealed at the time of reading or within the term of three days. The other resolutions that put an end to the instance are also within this term.”
The law provides that infringement actions can be brought before the administrative authority.
Article 238 of Andean Community Decision 486 Establishing the Common Industrial Property Regime empowers the holder of a registered industrial property right to initiate infringement proceedings against anyone who has violated or will imminently violate its rights, and empowers the competent authority to initiate an infringement action on its own initiative.
The unauthorised use of another party’s distinctive sign is illegal because this violates industrial property rights recognised by law (Article 97 of Decree-Law 1075). Punishable acts of infringement are those that are performed or can be performed in Peru.
Article 155 of Decision 486 sets out the causes of action. In particular, Article 155(d) states that the registration of a trademark gives its owner the right to prevent third parties from using in trade, without its consent, a sign that is identical or similar to the trademark in respect of any goods or services, when such use may cause confusion or a risk of association with the rights holder. If an identical sign is used for identical goods or services, a risk of confusion is presumed.
Article 99(h) of Decree-Law 1075 states that a party initiating an infringement complaint must file a copy of the registration certificate protecting its rights in in the trademark, commercial slogan or collective mark (for which registration is required). In the case of a commercial name (for which registration is optional), the complainant must submit evidence of use of trade names; in the case of a well-known trademark, it must submit documents proving this.
Infringement proceedings begin when a rights holder lodges a complaint with the Commission of Distinctive Signs. Together with the infringement action, the complainant can ask the authority to order urgent preliminary measures to prevent infringement, avoid its consequences, obtain or preserve evidence or ensure the effectiveness of the infringement action. It is also possible to request preliminary measures before initiating infringement proceedings or at a later stage.
If the complainant has submitted proof of an infringement (eg, an invoice or bill and a sample of the infringing product) and the infringement involves the marketing of products that bear a mark which is identical or similar to its own registered trademark, the complainant may request that preliminary measures be issued (eg, prohibiting the defendant from importing the product or seizing infringing products). If the administrative authority determines that the defendant is selling infringing products, it may issue an opinion on the evidence and, if the illegal nature of the damage is proven, adopt preliminary measures.
The complainant can participate in the inspection visit carried out by the administrative authority in order to verify whether there are infringing products bearing its trademark in the premises indicated in the complaint. If products bearing the infringing trademark are found, the authority may issue the preliminary measure of seizure until a first-instance decision is issued making the precautionary measures final. If the existence of infringing products, advertising materials or packaging is verified and these goods bear the complainant’s registered trademark, the court can order as a preliminary measure cessation of use of the sign and the confiscation of products.
The defendant must respond within five days of receiving the complaint. In replying to the complaint, the defendant can:
- state that it was unaware that the acts were infringing, agree not to market products bearing the complainant’s trademark and hand over any infringing products; or
- state that there was no infringement as the marks are not identical, noting the differences and the reasons why the signs are not confusingly similar for the public and stating that at the time of import it was unaware of the other party’s trademark, thus demonstrating its intention not to cause damage.
The secretariat of the Commission of Distinctive Signs will summon both parties to a conciliation hearing with the aim of helping them to reach agreement.
Assessment by authority
The administrative authority verifies the use of the trademark through the samples obtained through the inspection and the evidence submitted by the complainant. The authority compares the trademark used by the defendant and the complainant ‘s registered trademark, as well as the products sold by the defendant bearing the infringing trademark and the products described in the trademark registration certificate, in order to determine whether there is a risk of confusion. The authority then assesses whether the products are competitive in the market – that is, whether they are similar in nature, distribution and/or marketing channels, purpose or target consumer, and whether they are used jointly or in a complementary way. If the authority determines that the marks are confusingly similar, it will conclude that the complainant’s IP rights have been infringed through the manufacture or marketing of the same or similar products using an identical or similar sign to the registered sign (Article 155 of Decision 486) and apply the relevant penalties.
No specific law applies to the use of trademarks online. Therefore, if a registered trademark is used on the Internet without the rights holder’s permission, no infringement takes place.
Preventive measures and strategies
Law 28289/2004 against piracy and its amendment (Law 29013) established the Commission to Fight Customs Offences and Piracy, which:
- plans and coordinates actions and recommendations to combat customs offences and IP rights infringement;
- assesses the impact of customs offences and IP crime on the local economy; and
- promotes advertising campaigns in order to promote customs tax awareness and respect for IP rights.
Estudio Colmenares & Asociados
Bolognesi 125, Floor 9
Tel +51 1 446 5793
Fax +51 1 445 0347