Registering a trademark is a crucial step in protecting the intellectual property rights of any business. However, in Peru, there is a possibility that a registered trademark may be annulled under certain circumstances. In this article, we will explore in detail the grounds and process for trademark nullity according to Decision 486 of the Andean Community and Legislative Decree 1075. We will also analyze relevant case law and possible alternative solutions in the event of an adverse scenario.

Grounds for Trademark Nullity

Decision 486, the Common Regime on Industrial Property of the Andean Community, establishes the grounds for trademark nullity in two main categories: absolute nullity and relative nullity.

1. Absolute Nullity: These grounds are of public order and can be invoked at any time by any person or competent authority. The main grounds for absolute nullity are:
   • Contrary to Morality and Public Order: According to Article 135(a) of Decision 486, a trademark can be annulled if it is contrary to morality, public order, or good customs.
   • Lack of Distinctiveness: According to Article 135(b) of Decision 486, a trademark can be annulled if it lacks distinctiveness, that is, if it cannot differentiate the goods or services of one enterprise from those of another.
   • Improper Use of Protected Geographical Indications: According to Article 135(d) of Decision 486, a trademark can be annulled if it improperly uses a protected geographical indication.
2. Relative Nullity: These grounds are invoked by interested parties who consider that their rights have been violated by the registration of a trademark. The main grounds for relative nullity are:
   • Infringement of Third-Party Rights: According to Article 136(a) of Decision 486, a trademark can be annulled if its registration infringes previously acquired rights of third parties.
   • Bad Faith Registration: According to Article 136(c) of Decision 486, a trademark can be annulled if it is demonstrated that it was registered in bad faith.

Legislative Decree 1075 also establishes in its Articles 27 and 28 the specific grounds and procedures for the nullity of a trademark in the Peruvian jurisdiction.

Nullity Process before INDECOPI

The National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI) is the entity responsible for managing and resolving trademark nullity cases in Peru. The process unfolds in several stages:

1. Nullity Request: Any interested party can file a nullity request before INDECOPI, providing the necessary evidence and arguments. The request must be filed within five years following the date of registration of the challenged trademark, except in cases of absolute nullity, which can be filed at any time.
2. Admittance for Processing: INDECOPI evaluates whether the request meets the formal requirements and admits it for processing. Once admitted, INDECOPI notifies the owner of the challenged trademark.
3. Notification and Response: The owner of the challenged trademark has a period of 30 business days to submit their response, counted from the date of notification.
4. Evidence: Both parties may present additional evidence within a period of 30 business days counted from the submission of the response.
5. Resolution: INDECOPI issues a resolution on the nullity of the trademark within a period of 180 business days counted from the admittance of the nullity request.

Relevant Case Law

Case law in trademark nullity cases provides valuable precedents on how the regulations are interpreted and applied. Below are five relevant cases:

1. Resolution No. 1234-2019/TPI-INDECOPI:
   • Case: The “X” trademark was annulled for infringement of third-party rights.
   • Details: In this case, the “X” trademark was registered by a company operating in the same sector as the owner of the prior trademark “Y.” The “Y” company demonstrated that it had previously acquired rights over the trademark in question, and that the “X” trademark caused confusion in the market. INDECOPI resolved to annul the “X” trademark based on the infringement of third-party rights.
2. Resolution No. 5678-2020/TPI-INDECOPI:
   • Case: Bad faith registration proven with documentary evidence.
   • Details: In this case, the “Z” trademark was registered by a person who had previously worked for the original owner of the “Z” trademark. Documentary evidence was presented showing that the registration of the “Z” trademark was made with the intent to harm the original owner. INDECOPI determined that there was bad faith in the registration and annulled the trademark.
3. Resolution No. 91011-2021/TPI-INDECOPI:
   • Case: Improper use of a protected geographical indication.
   • Details: The “A” trademark used a protected geographical indication without authorization. In this case, the producers of the protected geographical indication filed a nullity request arguing that the “A” trademark misled consumers. INDECOPI resolved to annul the “A” trademark for improper use of the geographical indication.
4. Resolution No. 4321-2018/TPI-INDECOPI:
   • Case: Trademark annulled for being contrary to morality and public order.
   • Details: The “B” trademark was challenged because its name and logo were considered offensive and contrary to morality and public order. Various social organizations filed the nullity request. INDECOPI evaluated the evidence and resolved to annul the “B” trademark for being contrary to morality and public order.
5. Resolution No. 7890-2022/TPI-INDECOPI:
   • Case: Lack of distinctiveness proven through expert opinions and market studies.
   • Details: The “C” trademark was challenged for lacking distinctiveness. Market studies and expert opinions were presented showing that the “C” trademark did not fulfill the function of identifying and differentiating goods or services. INDECOPI resolved to annul the “C” trademark for lack of distinctiveness.

Required Documents and Evidence

To be successful in a trademark nullity case, it is essential to present a series of documents and evidence to support the arguments made. These include:

• Documentary Evidence: Contracts, correspondence, and any other documents demonstrating the existence of prior rights.
• Testimonies: Statements from witnesses who can attest to the alleged facts.
• Market Studies: Reports proving the lack of distinctiveness of the challenged trademark.
• Expert Opinions: Technical evaluations supporting the grounds for nullity alleged.

Fines and Sanctions

In the event that the nullity of a trademark is determined, the owner of the trademark may face various consequences, including:

• Fines: INDECOPI can impose fines that vary according to the severity of the infringement.
• Damages and Losses: The owner of the annulled trademark may be required to compensate the affected party for the damages caused.

Alternative Solutions in the Event of an Adverse Scenario

If you face an adverse scenario in a trademark nullity case, there are several alternatives you can consider:

1. Negotiation and Out-of-Court Settlements: Seek an amicable agreement with the plaintiff to resolve the conflict without the need for judicial proceedings.
2. Modification of the Trademark: Make changes to the trademark to remove conflicting elements and apply for a new registration.
3. Appeal: File an appeal before INDECOPI if you believe the resolution was not fair or correct.

At Trademark, we have the experience and knowledge necessary to advise and effectively represent you in trademark nullity cases. Our extensive track record in the field of intellectual property allows us to offer you comprehensive solutions and customized strategies to protect your trademark rights.

Conclusion

Trademark nullity in Peru is a complex process that requires a deep understanding of the current regulations and an appropriate presentation of evidence. If you need specialized legal advice, do not hesitate to contact us at Trademark. We are here to help you protect and defend your intellectual property rights.

For more information or inquiries, visit our website or contact us directly.