New mandatory precedents regarding intellectual property issues

By Espinosa Bellido Abogados

The National Institute for the Defense of Free Competition and the Protection of Intellectual Property (Indecopi) of Peru published on June 18, 2021, four new mandatory precedents regarding intellectual property issues:

1. Complaint for copyright and related rights infringement. Resolution No. 0023-2021 (TPI/INDECOPI)

The use of intellectual works is only exempt from the authorization and payment of copyright and related rights if it is carried out in an exclusively domestic environment, that is, in the framework of family reunions carried out in a place that serves as the natural seat of a home, and always respecting the honest use of the works.

2. Accreditation of real interest through a pre-existing registry. Resolution No. 0458-2020 (TPI/INDECOPI)

The precedent refers to Article 147 of the Andean Community Decision 486, which states that both the owner of an identical or similar trademark -for goods or services in respect of which use of the other trademark would be likely to lead to confusion- and the person that first applied for registration of the trademark in any Member Country, have a legitimate interest in lodging objections in the other Member Countries.

In either case, such opponents shall demonstrate real interest in operating in the market of the Member Country where they are filing an objection by applying for registration of the trademark at the moment they express their opposition.
If an objection is lodged on the basis of a trademark previously registered in any Member Country under the provisions of this article, the competent national office shall have the authority to deny registry of the second trademark.

The filing of an objection based on an application for trademark registration previously filed in any Member Country under the provisions of this article shall result in the suspension of the registration of the second trademark until such time as the registration of the first has been conferred. 

3. Cancellation of registration due to lack of use of a trademark. Resolution No. 0994-2020 (TPI/INDECOPI)

It is possible that the same evidence can prove the use of two or more trademarks in different cancellation actions, when it is verified that it is a simultaneous use. 

4. Cancellation due to lack of use of the trademark constituted by a packed box. Resolution No. 1137-2020 (TPI/INDECOPI)

In cases in which the trademark subject to cancellation is made up of an unfolded package or an unfolded box package, the trademark owner will have the obligation to demonstrate the use of the package as it is registered, namely, of all sides of the package as long as they contain elements that are relevant and whose absence would imply a substantial modification to the exact aspect of the registered trademark.