Trademarks

Estudio Colmenares provides the service of registration, processing and protection of trademarks, commercial slogans and trade names. It relies on a specialized service of surveillance and alert, with updated technical advice with regard to the International Classification for the correct placement and specification of goods or services that are applied for, either at unitary or multi-class level.

To obtain protection of a distinctive sign (trademarks, commercial slogans or trade names) the professional, after formal examination, carries out a registrability examination in order to assess whether the sign fulfills the criteria of law.

If no official objection or opposition is lodged, the Direction of Distinctive Signs issues a Resolution granting the registration of the applied for sign. The proceeding has a duration of about 4 to 5 months.

Estudio Colmenares provides its customers the security of defending their rights through its internal systems and with customized advisory in several languages and receives documents and notifications at administrative level in our Box N° 15 and at judicial level at the electronic address N° 275.

Definitions

We are pleased to detail below some information about the present regulations and requirements for handling Trademarks in Peru, comprising Decision 486, Common Regime of Industrial Property of the Andean Community Commission as well as Peruvian Law, D.L. 1075, Industrial Property Law.

MULTICLASS: Pursuant to current arrangements, it is possible to apply for multi-class brands. However, there are no official cost reductions yet.

PERIOD OF VALIDITY: Registrations of trademarks are now granted for a period of ten years from the granting date and are renewable for similar periods.

RENEWALS: Renewals must be applied for within a term of six months before the expiration date of registration. There is a period of grace of six months after the expiration date for requesting the renewal of a trademark.

TRADE SLOGANS / SLOGANS: Trade slogans or slogans must only be registered in connection with a registered or applied for Trademark and for the same class of said mark. Application for registering a trade slogan should specify the registered or applied for trademark upon which the trade slogan will be used.

TRADE NAMES: Only registration of Trade Names or Commercial Names are allowed for those ones used within the Peruvian territory or in any other member country of the Andean Community (Colombia, Ecuador and Bolivia), or in member countries of the Washington Convention of 1929 (USA, Cuba, Panama, Guatemala, Haiti, Colombia, Nicaragua, Honduras).

It is required the filing of proofs of first use of trade name. A separate registration is required for each class pursuant to the International Classification of goods and services, which is in force here.

Documents required

Power of Attorney, notarization and consular legalization are not required it is only required signature of authorized representative of the applicant firm by mentioning its ability to act.
Full details of the applicant, class and goods or services intended to be covered.
Logo or its reproduction by email, if the trademark is figurative.
A certified copy of the basic application, if the application claims priority.

Recordal of tranfers, licenses, changes of name and mergers

Transfers

Pursuant to current legislation, a granted trademark registration or pending of registration can be transferred through an act between the living individuals or by succession, with or without the enterprise to which it belongs. For the transfer to have effects against third parties it must be in written bearing the signatures of assignor and assignee, and this document should be recorded before the Direction of Distinctive Signs of INDECOPI.

Licenses

The holder of a trademark either registered or pending of registration can grant license to one or more third parties for using the respective trademark. For the license to have effects against third parties it must be in written, bearing the signatures of both the licensor and licensee, and it must be registered before the Direction of Distinctive Signs of INDECOPI.

Changes of name and mergers

The application for recording a change of name should be filed before the Direction of Distinctive Signs of INDECOPI, together with a certified copy of the Register of Companies showing the change effected. If the change of ownership is the result of a merger, a copy of the document proving the merger and duly issued by the competent Authority will suffice. The compliance of said copy with the original should be certified by the Authority that issued the document or a Notary Public or any other competent public Authority.

If the change of ownership is the result of, amongst other things, the application of a legal rule or a judicial decision, it will suffice to submit together with the application a copy of the document proving said change. Said copy should be certified by a Notary Public or any other competent public Authority, stating

it is in accordance with the original document issued by the corresponding public Authority.