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.”
Source INDECOPI.
