The Peruvian Trademark Office (Spanish: Oficina de Signos Distintivos de Instituto Nacional de Defensa de la Competencia y Proteccion de la Propiedad Intelectual-INDECOPI) is the national administrative entity that handles trademarks, trade names and slogans matters.
Fees are determined locally.
Who May Apply?
Any person interested in using a trademark in commerce may apply.
What Can Be Registered?
Symbols that are discernible, sufficiently distinctive and subject to graphic representation may be registered as trademarks. Slogans may also be registered.
Trademarks rights are only acquired through registration. The following symbols, among others, can constitute trademarks:
a words or combination of words;
a images, figures, graphics, logos, devices, labels, shields, portraits and monograms;
a sounds and smells;
a letters and numbers;
a color delimitated by a particular shape or a combination of colors;
the shape of products, the package designs or packaging; and a any combination of the symbols stated above.
What Cannot Be Registered?
Symbols may not be registered as trademarks if they:
(1) fail to meet the definition of trademark;
(2) lack distinctiveness; (3) consist exclusively of usual shapes or forms of goods or its packaging, or characteristics imposed by the nature of the use of goods or services in question;
(4) consist of forms or shapes that improve the functioning or art, or enhance or change the intrinsic value of the goods or services;
(5) consist of solely a symbol or name that in commercial use describes the quality, quantity, destiny, value, geographical origin, production date or other data, characteristics, or any information regarding the goods or services for which it is used, including the laudatory expressions referred to those goods or services;
(6) consist exclusively of a generic symbol or name which is commonly used in commerce to designate goods or services for which it is used;
(7) consist exclusively of a common and usual designation for the goods or services for which it is used;
(8) consist of a color that stands alone without being incorporated into a specific shape;
(9) may deceive consumers or commercial media, in particular, regarding the geographical origin, nature, method of manufacture, characteristics, qualities or usefulness of the goods or services in question;
(10) reproduce or imitate a protected appellation or name of origin for same or different goods, when the use may cause confusion with said name; or may implicate an unjust exploitation of its notoriety;
(11) contain a protected appellation of origin for wines and spirit waters;
(12) consist of a local or foreign geographical name that may
cause confusion with respect to goods or services in question;
(13) reproduce or imitate, with no permission of the competent authorities, as trademarks or as elements of the referred trademarks, coat of arms, flags, the shield or any other insignia of any State or any international organization;
(14) reproduce or imitate symbols according to technical standards, unless said registration is sought by the competent domestic agency in charge of technical standards and quality;
(15) reproduce, imitate or include the designation of a protected plant variety, if the name covers goods or services related to said plant variety or the use may cause confusion or association with said variety; and
(16) are contrary to law, moral principles, public order or accepted standards of behavior.
Notwithstanding the prohibitions stated in numerals two, five, six, seven and eight, a symbol may be registered if the applicant has been using the mark in Peru or any country member of the Andean Pact and, as consequence of that use, the mark has acquired distinctiveness with respect to the products or services to which it is applied.
Third parties may, without the consent of the trademark registrant, use their proper names, domiciles, or pseudonyms; use a geographical name, or any other fact related to the type, quality, quantity, intended use, value, origin, period of production, or any other characteristic of the goods or services for which the mark was registered.
An application for each international class of products and services must be filed before the Peruvian Trademark Office. The application must contain:
name and address of applicant andlor its legal representative; the indication and description of the mark for which registration is sought;
a list of goods or services belonging to the class for which the trademark is sought;
the indication of the corresponding class;
indication of number of foreign application, date of filing and country if claiming priority, according to Paris Convention; and the signature of the applicant or its legal representative.
Documents to be filed with the application: a receipt showing payment of the filing fee; five prints of the mark when it has graphic elements;
power of attorney, notarized and legalized before the Peruvian Consulate; and certified copy of foreign application, if claiming priority.
Failure to meet these requirements (except power of attorney and certified copy of priority document) results in the rejection of the application.
Evaluation & Review
Once the application has been accepted, the trademark office examines the application and, in 15 working days, must determine if the application complies with the formal requirements. If the application does not comply with the requirements, then the office will notify the applicant to fulfill with the missing requirements. If corrections are not submitted, then the application is rejected. The office grants 60 working days for corrections, which is a nonextendible period. If the application complies with the requirements, then the domestic office orders the publication of the mark application in the official gazette. Once the application is published in the official gazette, any legitimate party may file an opposition against the mark application, within the nonextendible 30 working days counted from the date of publication. Legitimate parties include the owners of any identical or similar registered marks or pending applications in any of the countries of the Andean Pact. The opponent must prove a real interest in the Peruvian market, by filing a mark application before the Peruvian
trademark office at the moment of filing the opposition. Once the period of opposition lapses and no oppositions are put forth, the trademark office will determine if the trademark is registrable and will grant or reject registration. If registration is granted, then a certificate is issued. If registration is denied, then the
trademark office notifies the applicant with a full explanation of the decision. Applicant may appeal said decision. If an opposition has been filed, the domestic office will include in its analysis of registrability the arguments stated in the opposition and will decide to grant or reject the registration.
The trademark registration term is 10 years from the date of grant. Registrations may be renewed for successive 10-year periods. There is no need to prove use in commerce to renew a trademark. Renewal applications must be filed before the trademark office, within the six months prior to expiration. The law grants a grace period of six months to renew a trademark, counted from the date of expiration. A receipt showing the payment of official fee must be filed with the application.
At the request of an interested party, the trademark office may cancel a mark that has not been used in any of the countries members of the Andean Pact by its registrant or his or her licensee within the five consecutive years prior to the date in which the action for cancellation is brought. Cancellation of the trademark for lack of use in commerce may also be sought as a means of relief following proceedings for infringement, opposition and invalidity when those proceedings
are based on a trademark that has not been used.
Use of the trademark must be substantiated by proofs to be determined by each member country of the Andean Group, and the burden to do so is on the trademark registrant. Acts of God and unforeseen circumstances are justifiable causes for the failure to use a trademark. A trademark is considered in use if the goods or services for which it is used have been commercialized or are available on the market, in reasonable quantity and normal fashion, taking into account the nature of the goods or services and the manner in which they are marketed. A trademark is also considered in use if it is used to distinguish goods slated for export from any of the member countries of the Andean Group. Use of a mark in a manner only slightly different from the form in which it was registered, regarding details or elements which do not affect its distinctive character, shall not be reason for cancellation on the grounds of lack of use, nor will it diminish the
protections conferred by registration.
When a third party registers without authorization a well-known trademark as a domain name or an electronic address, the trademark owner or the legitimate possessor of the well-known mark may request from the competent office the cancellation or amendment of the registration of said domain name or electronic address, only if the use of said domain name may cause confusion or mistake with similar or different goods or services identified by the well-known trademark or
may dilute the distinctiveness of the mark, unjustly exploit the prestige and goodwill of the trademark or cause an economic or commercial damage to the mark.
The registrant may request from the competent office the suspension of the importation or exportation of goods that may infringe its trademark rights. The registrant must have valid arguments to request the suspension. The registrant must file the necessary information and a sufficient detailed description of the goods that are the object of the presumed infringement. If the requirements are fulfilled the competent office may order the suspension of the importation or exportation. If no infringement action is filed in 10 days counted from the day of suspension, the competent office will raise the suspension measure. If the infringement action is initiated and infringement is determined, the infringing goods will not be reexported. The competent office may order the seizure and destruction of the infringing goods. Defendant may appeal.