Region: Peru

Non-use guidelines issued by Andean Court of Justice

The Andean Court of Justice has issued a new set of rules which will assist in determining if a mark is technically in use. The decision was based on an interpretation of Article 110 of Decision 344, which was replaced by Decision 486 in 2000. However, as the wording of Article 110 is the same as that in Article 166 of Decision 486, it is thought that the court's guidelines will also apply to Decision 486.

30 May 2006

Beer bottle case sets new guidelines for 3-D mark examination

In a case involving the shape of a bottle for beer, the Administrative Court has issued a resolution that sets new guidelines for the examination of three-dimensional marks. The court held that in assessing whether a shape is the usual shape for the goods at issue, account should be taken of international markets, and similar, competing or related products.

08 March 2006

Criteria for cancellation for non-use clarified

The Administrative Court has partially overruled a decision of the Trademark Office and has indicated that a mark should be cancelled in respect of all products in relation to which there is no evidence of use. Among other things, the court clarified that this is the case even if such products are similar or related to those for which there is sufficient evidence of use.

19 January 2006

Viagra tablets shape mark not fit for registration

The Administrative Court has rejected Pfizer Inc's application to register the three-dimensional shape of Viagra tablets as a trademark on the grounds that it lacks distinctiveness. The court found that (i) other pharmaceutical companies use similarly shaped tablets for similar products, and (ii) only secondary features distinguish the Viagra shape from these other shapes.

15 July 2005

Proof of use requirements in cancellation actions spelt out

A meeting between the Peruvian Association of Industrial Property and officials from the Trademark Office has led to a number of proposals regarding the evidence required to prove use within the context of a non-use cancellation action. Among other things, notes from the meeting suggest that licence agreements need not be registered in order for use of the mark in issue by the licensee to be perceived as valid use.

08 July 2005

Survey showing secondary meaning saves bottle mark application

The Trademark Office has reversed a decision in which it was held that a three-dimensional mark consisting of the shape of a beer bottle lacked distinctiveness and thus was not registrable. On reconsideration, the office found that a survey submitted by the applicant clearly showed that the shape mark had acquired secondary meaning.

21 June 2005

EBEL PARIS unfair as products are not from France

In <i>Fédération des Industries de la Parfumerie v Ebel International</i>, the Trademark Office of Peru has upheld an opposition to the registration of EBEL PARIS for goods in Class 3 of the Nice Classification. It found, among other things, that the trademark was misleading because it gave consumers the false impression that the products sold under the mark came from France.

11 April 2005

BIOSILK worms its way out of opposition

In <i>Farouk Systems Inc v Multi International SRL</i>, the Trademark Office of Peru has dismissed the plaintiff's opposition to the registration of BIOSILK. Among other things, it stated that the defendant had better rights to the mark as it had applied to register it in an Andean Community country two years before the plaintiff's first Andean Community application.

15 December 2004

Dissimilar products mean CRAYOLA marks are not confusing

The Administrative Court has held that the marks MINI MILK CRAYOLA for ice creams and CRAYOLA for stationery, clothing and games are not confusingly similar as, among other things, the products to which they apply are different. In its analysis of what makes products similar, the court followed the criteria set out by the Andean Court.

07 October 2004

Nº1 mark lacks distinctiveness

The Administrative Court has upheld a Trademark Office decision to refuse registration of the service mark Nº1 on the grounds that it lacked sufficient distinctive character. The court agreed that the proposed mark was a laudatory sign that should be available to everyone.

19 July 2004

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