New project of law for the creation of the National Registry of Well-Known trademarks in Peru

By Francisco Espinosa Reboa

The Project provides the creation of a special Registry inside the Peruvian Trademark Direction in which Well-Known trademarks would be registered.
 
It also provides a special procedure, at the request of the trademark’s owner, for the recognition of the Trademarks with Well-Known status. Such procedure is based in the trademark application procedure currently in force in Peru, with the same terms and requirements.
 
The criteria in order to determine the Well-Known status of a trademark is the one mentioned in article 228 of Decision 486 of the Andean Community:

Article 228.- In order to determine whether a distinctive sign is well-known, due account shall be taken of the following criteria among a thing :
a) the extent to which it is known in the relevant sector of the public in any Member Country;
b) the age of the distinctive sign and the size of the geographical area where it is used in and outside any Member Country;
c) the age and the size of the geographical area where the distinctive sign is promoted, in or outside any Member Country, including its advertising and presentation at fairs, exhibitions, or other events in connection with the goods or services, the establishment, or the activity to which it is applied;
d) the value of all investments made in promoting the distinctive sign or the establishment, activity, goods or services to which it is applied;
e) figures for the sales and income of the owner, both at the international level and in the Member Country where protection is being sought, in respect of the distinctive sign whose well-known character is alleged;
f) the extent of the inherent or acquired distinctiveness of the sign;
g) the book value of the sign as a corporate asset;
h) the volume of orders from persons interested in obtaining a franchise or license to the sign in a specific territory; or,
i) the existence of significant manufacturing, purchasing, or storage activities by the owner of the sign in the Member Country where protection is being sought;
j) the international trade-related aspects; or,
k) the existence or age of any registration or application for registration of the distinctive sign in the Member Country concerned or in any other country.
Also, the following information about the trademark should be submitted:
 
-       Date of first use in Peru and detailed information of the corresponding goods or services.
-       Time of continuous use of the trademark in Peru.
-       Market share for the trademark in its sector or segment.
-       Duration, reach and geographical extent of the advertisement for the trademark in Peru and the Andean Community.
-       Percentage of recognition for the trademark by the general public and commercial circuits of the corresponding goods or services.
 
The declaration of a trademark as Well-Known would have a duration of 10 years.
 
The resolution which declares a trademark as Well-Known will have to be published in the Official Newspaper.
 
Nullity causes are provided against the declaration of Well-Known status of a trademark.
 
Possibility of requesting the recognition of a Well-Known status of a trademark would still be available in opposition, infringement, nullity or cancellation procedures, and in those cases the trademark owner will have a one year term to request the recordal of its trademark’s Well-Known status in the special Registry.
 
Finally, it is provided that Well-Known trademarks may not be cancelled for lack of use.
 
We will see if there are any comments to this project of law by the Peruvian Industrial Property and Copyright Association (APPI) or other Industrial property associations, and if it finally becomes law during the next months.