Thursday, 11 December 2008

Trade Mark Office can't rule on copyright infringement

A Peruvian Administrative Court has declared a resolution of the Trade Mark Office void for having exceeded its legal competence under the law. In February 2007 Enrique Pajuelo Escobar applied to register as a trade mark for building materials for the construction industry (Class 19) a word and design mark LADRILLOS FORTE. Cementos Lima SA opposed, citing its earlier registered trade mark for the letters CL and design, maintaining that this design was protected as a literary work and that the mark applied for was confusingly similar to both its mark and its design. The Copyright Office confirmed to the Trade Mark Office that the Cementín design was protected as a literary work. The latter however rejected Cementos's opposition and allowed registration of LADRILLOS FORTE, rejecting the finding that Escobar's mark was confusingly similar to Cementos's earlier mark or design (regarding the designs, the Trade Mark Office held that there was no infringement either).

The Administrative Court overturned the resolution of the Trade Mark Office, holding that the Copyright Office was the only authority competent to determine whether a specific sign or mark infringed third party copyright. The Trade Mark Office had thus exceeded its competence in comparing Escobar's mark, as it was not empowered to do so under the law.

Source: note by Gonzalo Ferrero Diez Canseco, Lema Solari & Santiváñez, Lima, in World Trademark Review.

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