Trademark licensing in Peru is a legal process that allows a trademark owner to authorize a third party to use their distinctive sign under certain conditions and terms. This procedure is primarily regulated by Decision 486 of the Andean Community and Legislative Decree No. 1075. Below, the procedure and key considerations for licensing a trademark in Peru are detailed.

Concept and Nature of Trademark Licensing

Trademark licensing is an agreement in which the owner of a registered trademark (licensor) grants another party (licensee) the right to use the trademark in connection with certain products or services. This right can be exclusive or non-exclusive and is usually subject to specific conditions agreed upon by both parties.

Types of Licenses

1. Exclusive License: The licensor grants the exclusive right to use the trademark to the licensee, relinquishing the use of the trademark under the same conditions and market areas during the term of the agreement.
2. Non-Exclusive License: The licensor grants the right to use the trademark to the licensee but reserves the right to grant similar licenses to other third parties and to use the trademark personally.

Legal Requirements for Trademark Licensing

For a trademark license to be valid and enforceable against third parties in Peru, certain legal and administrative requirements must be met:

1. License Agreement: It is essential to have a written license agreement clearly specifying the terms and conditions of the agreement, including the scope of the license, duration, territory, authorized products or services, and the obligations of both parties.
2. Registration with INDECOPI: Although it is not mandatory to register the license agreement with the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI) for it to be valid between the parties, it is advisable to do so to make the license enforceable against third parties. Registration provides publicity and additional protection to the agreement.

Procedure for Registering a Trademark License with INDECOPI

1. Filing the Application: The process begins with the submission of a license registration application to INDECOPI. The application must be accompanied by the license agreement or an extract thereof, duly signed by both parties.
2. Review and Evaluation: INDECOPI reviews the application and the submitted documents to ensure compliance with legal and administrative requirements. This review includes verifying that the license agreement does not contain clauses that may mislead consumers or contravene public order.
3. Publication: Once INDECOPI has reviewed and approved the application, the license is published in the Official Industrial Property Gazette. This publication serves to inform the public and interested third parties of the existence of the license.
4. Registration: After publication and if there are no oppositions, INDECOPI registers the license in the trademark registry, thus granting official publicity and protection to the license agreement.

Obligations and Rights of the Parties in the License Agreement

1. Licensor:
   • Guarantee the validity of the licensed trademark.
   • Refrain from actions that may negatively affect the licensee’s right to use the trademark.
   • In the case of an exclusive license, not grant additional licenses or use the trademark in the same territory and conditions.
2. Licensee:
   • Use the trademark according to the terms agreed in the contract.
   • Maintain the quality of the products or services offered under the trademark, in line with the licensor’s standards.
   • Pay the royalties or consideration agreed upon.

Final Considerations

Trademark licensing is a strategic tool that allows trademark owners to expand their market presence without the need for direct investment in new geographic areas or market segments. At the same time, it provides licensees with the opportunity to leverage the reputation and recognition of an established trademark.

It is crucial for both licensor and licensee to obtain appropriate legal advice to draft and negotiate the license agreement, ensuring that all provisions are clear and fair and that the agreement complies with all applicable regulations.

For advice on this matter, please contact us.