Action due for infringement of trademarks rights

Estudio Colmenares offers the service of initiating action for infringement against any person that uses in trade an identical or similar sign to the registered trademark, when such a use may cause confusion or risk of association with the holder of the registration.

In this case, it is advisable to submit an invoice or a bill of sale and the product evidencing the infringing use.  During the inspection visit, to which we assist, the Authority drafts an act listing the infringing products and delivers the denouncement which should be replied by the defendant within a term of five working days.

The Commission of Distinctive Signs, after assessing the submitted proofs, including the act of the inspection visit, will resolve within about eight months.  If the Commission declares the denouncement for infringement of Industrial Property rights as well founded, it will sanction with a fine and will forbid the infringing use and, in certain cases, the payment of costs and expenses.  If an appeal is lodged, the Second Instance will issue a resolution within ten months.  The competent Authority has, by law, a maximum term of 180 working days for issuing a resolution.

Cancellation of a trademark registration due to lack of use

Estudio Colmenares offers the service of initiating a cancellation action of a trademark registration if it has not been used in any Andean country either by its holder or an authorized person during three consecutive years preceding the date in which the cancellation action is lodged (Article 165 of Decision 486), as well as the whole process.  In this case, the burden of proof is reversed and the holder should evidence the use of its trademark.

On the other hand, it is also offered the service of defending the trademark holders when they have been notified with a cancellation action by a third party alleging lack of use.  The holder has a term of sixty working days to prove use of its trademark by commercial invoices, accounting documents and audit certifications, amongst other documents, demonstrating regularity and amount of commercialization of the goods identified with the trademark (Article 167 of Decision 486).

The term of processing a cancellation action is three months until first instance and if the decision is appealed before  the second instance, it will last about 10 months.  The competent Authority has a maximum term of 180 days to issue a resolution (Article 128 of the Legislative Decree No. 1075).

Complaints before the judiciary

Estudio Colmenares offers legal services on industrial property before the Judiciary in contentious-administrative proceedings by preparing the grounds of a complaint or a response against a lawsuit.  This judicial process has as purpose the juridical control of the Judiciary on the legality of the actions issued by the public administration.

The judicial process has a duration of one year and ten months, approximately, until the judgment of the First Instance Judge, and two and a half years until the judgment by the Superior Court of Second Instance and one more year in the Supreme Court.

Nullity of trademark registration

Estudio Colmenares provides the service of initiating the administrative action of nullity of registration of a trademark before the Trade Mark Office that granted the corresponding certificate, when it is included within any of the reasons of law (Article 172 of Decision 486).  If the trademark had been granted in contravention of any rights of thirds or if it had been granted in bad faith, it is possible to initiate the relative nullity of the registration of said trademark.  In this case the action prescribes within five years counted from the granting date of the registration, the nullity of which is requested.

It is also possible to initiate, at any time, the absolute nullity of the registration of a trademark that was granted under an absolute impediment.  This action does not prescribe.

In this case, the plaintiff must submit proofs evidencing that the registered trademark was granted by incurring in certain of the presumptions of nullity. Then the holder has a term of two months to reply the nullity action.  Then, the Trade Mark Office will evaluate the proofs and if they evidence the presumptions of the action, it will declare the nullity of the certificate the effect of which is the non-existence thereof.

On the other hand, it is also offered the service of defense of the trademark holders when they have been notified with an absolute or relative nullity action of a trademark registration by a third party or ex officio.

The First Instance issues a resolution in about eight months and if this is appealed before the Second Instance it will last about between 10 and 13 months.  The Administrative Authority has a maximum term of 180 working days to issue a resolution (Article 128 of Legislative Decree N° 1075).

Opposition

Estudio Colmenares provides the service to oppose an application for registration of a trademark when it does not fulfill the requirement of distinctiveness or is included in one of the absolute impediments (descriptive, generic or it is a usual designation or other) or when it unduly affects a third party right, particularly, if it is identical or confusingly similar to a trademark registered or applied for previously for the same goods or services or for connected goods or services or if it is identical or resembles to a protected trade name or a commercial slogan previously applied for or registered, amongst others.

Within a term of thirty days after the publication date, a well-founded opposition can be filed to prevent a trademark from being registered.  According to law, Estudio Colmenares can also lodge Andean oppositions based on a trademark previously applied for or registered in any of the Andean Countries and an opposition based on the Washington Convention.  The holder of the Andean trademark must submit a copy of the application or the prior registration obtained in the Andean Registry, together with a copy of the application for registration of the same trademark in Peru.

The applicant has a term of thirty days for replying the lodged opposition.

The First Instance issues a resolution in about three months and if appealed before the Second Instance, it will last about nine months and, in accordance with the procedural burden, it would last from 12 to 13 months.  The competent Authority has a maximum term of 180 working days to issue a resolution (Article 24 of Legislative Decree N° 1075).