Tuesday, 23 June 2015
The Peruvian Institute for the Defence of Competition and Protection of Intellectual Property (Indecopi), recently announced the recognition of various national trade marks as well-known trade marks.
These well-known trade marks have achieved such status after a rigorous evaluation made by the Directorate of Distinctive Signs, and based on Article 224 of Decision 486 of the Andean Community.
The criteria followed by the Andean legislation is as followed: the degree of knowledge about the the mark by the population of the member state; the duration, extent and geographical scope of its use and promotion inside or outside any member country; advertising, presentations at fairs, exhibitions or other events; the value of the investment made to promote the brand.
INDECOPI notes that “recognition of notoriety of a brand is an exceptional situation that very few brands reach.” It adds that such recognition brings “stronger protection not only against risks of confusion but also against the risk of misappropriation of the reputation of the brand and dilution of its distinctive force.”
Attention should be brought to the fact that the Andean legislation regulates the possibility of derogating from the principle of territoriality, protecting well-known marks beyond the country in which they are registered.
Recently recognized brands as notorious in Peru include: Cantol, Inca Kola and Asu Mare. Foreign brands include Coca Cola, McDonalds, Google, among others.
A final point which is important to raise is that a well-known mark may lose this status over time since notoriety is “conditional upon the owner to develop efforts to keep the degree of brand awareness that allowed him to reach this special recognition.”