Descriptive and Distinctive marks – walking a fine line between granting or not granting registration in Peru

Marlene Prada Bautista applied to register at the INDECOPI a figurative mark featuring a rectangular label which contains the stylized shape of a woman’s body and the word mark ‘fájate’; colour was not claimed. The word ‘fajate’ comes from the reflexive verb ‘fajar’ meaning I wrap myself. The actual item which you use to wrap yourself with is called ‘faja’. Generally a ‘faja’ is used by women who would like to look well shaped (in South America we use it mainly after giving birth and for special occasions – not that I ever needed one!) and is common in the sport arena for bracing or supporting your back.

The application originally was for ‘shoes, hats, dresses, lingerie, underbust, shapewear, and cyclist’s brace’ (Class 25). The question on this case was whether the sign was descriptive against the goods applied for.

The Office refused the mark considering inter alia that (1) the term ‘fájate’ comes from the action ‘fajar’, meaning to wrap part of your body with a ‘faja’. Therefore, the dispute term will be perceived by the public as an invitation to use ‘fajas’ as a underbust, shapewear and cyclist brace and thus, relating to the products that the manufacturer wants to distinguish; (2) even though the figurative mark presents other symbols, they are not distinctive since the disputed term is the one that stands out.

The applicant inserted a motion for reconsideration but this time limiting the sign to only ‘shoes, hats and dress’. The Office however, upheld the decision considering that the term was still descriptive of the goods applied for. It explained that there are some dresses that in the inside contain a type of ‘faja’ as to stylize the shape of the person wearing it (I wonder if the Officer tested the product). The view was also extended as to consider the need to keep free policy.

Miss Prada appealed to the Sala de Propiedad Intelectual (court of first instance) requesting the decision to be annulled. However, at this time, she asked for the term ‘fájate’ to be avoided. The court started to analyse what a descriptive term is (Art 135 (e) Andean Community Decision 486) and what makes a mark distinctive (Art 135 (b) Andean Community Decision 486).

To sum up, the decision turned very much on the particular facts. The court studied the sign as a whole eluding the term. Specifically, the court examined the rectangular label which corners are rounded, containing in the inside a stylized shape of a woman’s body and a characteristic writing. Therefore, the court reversed the Office’s decision due to considering that the sign was distinctive against the goods applied for. Uh? did I miss something?

The moral of the story
Stories are meant to teach you a lesson. In law, we look for eliminating the complexity of issues. However, this case leaves us with the same questions as always – where to draw the line when in presence of descriptive marks and those that are not capable of distinguish? I believe that these issues are indeed a question of fact. That said, if we analyse the case I agree with the Officer’s view. He rightly evaluated the sign as a whole. At this stage we must remember that the term was claimed as being part of the mark, but yet the Officer said that those other parts of the sign were not distinctive because the only distinctive part of the sign was the term (which was descriptive). I wonder why the Court did not see that.

If we remove the part that stands out, we are left with a quite common label for ladies evening wear. But then, this will not be a matter of descriptiveness but a matter of distinctiveness instead. If the term can be used by anyone in commerce, what makes this particular sign distinctive from others?

Clearly, decisions are made case by case, yet I consider that the mark in this case is one of those that can go either way. I finish by saying that there is indeed such a thing as bad trade marks and hence, manufacturers that do like risks (terrible tanguero that does not compete fairly!). Evidently, to own a mark that can be easily associated with others, will make the former weak.

The case in Spanish can be found in here.

The ambitious project that seeks to change the Chilean wine map

Back in September, a group of people from the wine industry (vineyard owners, winemakers, academics, advisers, among others) which is lead by the Wines of Chile, are meeting weekly to work on a new map of Chilean wine. The goal is to introduce new appellation of origins (read the Spanish report here).

At the moment, Chile has one wine geographical indication, namely those that are in the ‘Valley’ and protected under Decree 464.
They are now looking to extend it to ‘Coast’, ‘Central’ and ‘Mountains’. In 1995 a wine map was published. It runs from north to south of the valleys. They believe that this is obsolete; it is considered that there is an increase geographic diversity due to the climate changes that occur from the foot of the Andes (Mountains) to the Pacific Ocean (Coast). For example, they consider that vines near the coast (colder weather) produce white wines of much higher quality.

It appears that they are doing their homework. Two months later - November, they have already bought a database with the climate of Chile in the last 20 years and have already used isothermal boundary lines to draw the map. All members registered with the Wines of Chile are sending GPS coordinates of their fields, their altitude and a self-rating within the three proposed categories.

The effort appears to be paid off. The director of Agricultural and Farming Services (SAG in Spanish) declared this week, that he would like to collaborate. This body is the one that starts the process for the Decree 464 to be amended (then it needs to be signed by the Ministry of Agriculture and later on, sent to the President for approval). So, to have the director in their side is a good start.


The big question is, what is the motive – are they pure Geographical reasons or monetary ones? I believe both. On one hand, it is important that the legislation recognises the wine industry. By this way vintners communicate to consumers that a vineyard is located in a specific area. On the other hand, as in any business, there is a commercial interest behind. Once consumers know more about the product they will be willing to pay more – the premium.

If everything goes as planned, next year we will be raising our glasses to ‘Aconcagua Costa’ or ‘Cachapoal Cordillera’.

Will Avon's ladies lure the Latins?

A post earlier today in Fashionista-at-Law warns that veteran cosmetics company Avon is setting its sites on Latin America. Citing Brand Channel as its source, Fashionista says:

"After seeing its sales take a bit of a battering in North America and China, Avon has been refocusing on sales to the cash-strapped by (i) promoting lower-priced products, and (ii) heavily targeting Latin America, where, the company says, people spend a high proportion of their income on beauty products".

IP Tango says that Avon should beware. The fact that Latin American consumers spend a high proportion of their income on beauty products doesn't mean that they are going to provide the cash expenditure to bring the Avon brand out of its doldrums: if you're spending a high proportion of your income on cosmetic products, the explanation might either be that you love the luxury of these products -- or that you're not earning so very much in the first place.

INPI Sets Higher Grounds and Prepares Itself for Madrid Protocol and the 2014 World Cup

The Brazilian National Institute of Industrial Property (INPI) has been recently providing goods news and making strong efforts to enhance the quality of its services, especially on patent and trademark prosecution matters. Last October 30, INPI announced the raise of the number of the patent allowances in the last three years, with 3.681 patent applications in 2008 and 2.419 patent allowed in 2007. For this year, it is expected that the total amount will reach 3.886 allowances. In 2010, INPI is committed to achieve the number of 4.250 favorable decisions.

This news is regarded as the recognition of INPI’s effort and commitment to decrease the time of the patent examination procedure and the current backlog, as this Agency used to take almost 8 years to grant or refuse a patent.

As to trademarks, INPI’s President – Mr. Jorge Ávila – promised in last October 22, to reduce trademark examination procedure up to 12 months already in 2010. This promise went public soon after a Report promoted by the American Chamber of Commerce (AMCHAM) in Brazil had stated that INPI is not a reliable Agency due to the continuous delays in trademark prosecution, which can take place up to 5 years.

In reality, it was not the first time that such announcement was made by the President of INPI. On April 2008, Mr. Ávila confirmed that this Office was taking stringent measures to improve trademark examination so that INPI can meet the required deadline of 18 months, as set out by the Madrid Protocol.

Further to that, the efficiency of INPI’s services in trademark prosecution will be valuable to effectively implement the cooperation agreement executed between the INPI and the Federation Internationale de Football Association (FIFA). This general cooperation signed in March 5 aims to provide a better protection to FIFA trademarks, as a preparation for the 2014 World Cup of Football that will take place in Brazil.

Terra Group acquires Shell’s operation in Central America

Back in 2008, Shell, the oil company stated its intention of selling its Central American operations. One year later, the Honduran company has won the competition for Shell’s distribution and operation in Guatemala, Nicaragua and Honduras (it previously obtained the operations in El Salvador). The agreement establishes that the Terra Group will uphold and respect existing contracts with suppliers and with tenants (see press release here in Spanish).


The sale was confirmed by Fabricio Pereira, manager at Shell Costa Rica. He explained that "the agreement includes operation, marketing and sales in those countries, including Shell's strategic alliances”. The agreement also includes the acquisition and license to use the brand in these countries.

Will Terra Group start to buy Shell in South America? Have you heard the joke "when you’ve lost all your marbles, you’ve become a shell collector!" (man and mollusc jokes here)

Premio Planeta 2002 prize winner found liable

Alfredo Bryce Echenique, known as the winner of the ‘Premio Planeta 2002’ for his novel “ the garden of my beloved” has been sentenced by the INDECOPI.

The decision comes after the writer allegedly copied 16 articles from different media (nationally and internationally). In January 2009,the first administrative instance at the Copyright Commission – INDECOPI held that Mr Bryce has infringed moral rights which are protected under ‘Ley sobre el derecho de autor’;specifically, the right of integrity (Art 25) and the paternity right (Art 24). The writer was fined 71,000 new soles ($56,000 approx).

Mr Bryce appealed to the decision on the grounds that there were improprieties in the proceeding such as: the defendant (Mr Bryce) was not properly notified in his legal domicile which was in Barcelona, Spain; that the alleged copied articles were published in Spain and therefore, the Peruvian courts lacked of jurisdiction; and lastly, that the first administrative instance did not take into consideration the principles of proportionality and reasonableness. Moreover, there was, according to him, a pending request for defence to the institution as to declare invalid the resolution.

The National Institute for the Defence of Competition and Intellectual Property Protection (INDECOPI in Spanish) upheld, through the Intellectual Property Chamber, the first instance decision. It confirmed that there were not improprieties in the process and that the Peruvian law grants right to authors irrespective of nationality or place of publication (Art 203). What is more, it also extended the decision to mention that the fine was proportional to the infringements since they were repeated (Art 186 (f)) and disseminated through mass media (Art 186 (e)).

I believe indeed that the penalty imposed is proportional to the harm caused. However, how is this fine going to be distributed? Usually compensation for the alleged infringement is made to the editorials – the copyright owner. However, as we are in presence of moral rights, should not compensation be to the authors? The law does not explain this point, Art 186 and Art 194 only set up how compensation must be established.

After hearing the sentence the writer said that he will resort to the judiciary, believing that the judicial system is more reliable that the administrative one. There is under Peruvian law the possibility of a civil and penal proceedings . However, I do not expect a u-turn if the case goes into trial. The key issues are the ‘amount taken’ and the ‘use made’ of the work. As the case stands, it appears to be against Mr Bryce because there have been substantial copy and the use was for commercial purposes (Art 186 (b)). He could also be in front of a penal action and thus, could put himself in jail for no less than 2 years (Art 217).

Facebook is looking to target the Latin American market

The biggest social network, which has more than 300 million users, has expressed its intention for closer relations in the Latin American market. Michael Murphy, worldwide sales vicepresidente at Facebook, explained that Facebook is a great place for brands. At the moment, there is a large portion of ‘Latinos’ visiting the website; from these, one million are developing applications for the site. He believes that Facebook is a great place for consumers who would like to share and create business opportunities.

Facebook’s advertisers want closer relations with users and they are planning to do so through Fox Point. Hector Costa, senior vice president and general manager of Fox Point Networks for Latin America, said that “in Latin America web advertising penetration is growing at double digits every year. Advertisers want to use social networks to advertise their goods and services”.

Murphy, also explains that Facebook has a link to advertisers in different formats and so a brand can send messages to users. Nevertheless, he said that this is just a business model which is in test phase. All the same, he confirms that Facebook’s revenue comes from advertising. As for competition, he mentions that Facebook differs from others like Twitter and MySpace in that people on Facebook register with their real name, and other networks of people are anonymous, "so Facebook is a safer space for brands to reach out to consumers."

Facebook is working as any other media - professionally. They are not taking advantage of the cyber space – are you listening...metatags, keywords, hyperlink and finally adwords? We can note a straightforward business agreement. There is ‘consent’ to display an advertisement. That said, if we do not discuss here the issue of whether an average consumer will be confused or not by these new way of advertisements, it is clear that there are ‘fair practices’ in which the cyber world can integrate marketing and advertising without raising concerns to trade mark owners.