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Barreda Moller writes...

New Precedent of Mandatory Compliance Regarding Notoriety of Trademarks

The Intellectual Property Chamber of the Court of INDECOPI has recently issued a decision of mandatory compliance, which expressly and with general character interprets the sense of our legislation in the matter of trademark notoriety.

Article 136, paragraph h) of Decision 486 establishes that trademarks which constitute a total or partial reproduction, imitation, translation, transliteration, or transcription of a notoriously known distinctive sign belonging to a third party, are irregistrable, without regard to the type of product or service to which the sign shall be applied, the use of which would lead to:

  • likelihood of confusion or mistaken association with that third party or with its products or services;
  • unfair advantage of the sign prestige; or
  • weakening of its distinctive force or its commercial or advertising value.

The Intellectual Property Chamber establishes certain guidelines for the analysis of the “risk of confusion”, “dilution risk” and “unfair exploitation of the trademark prestige” in the case of trademark notoriety. 

  •  As regards to risk of confusion, in the case of notorious trademarks said criteria must be applied in a more strict way since the protection of notorious trademarks goes beyond the general guidelines about competitive relationship or connection of the products.
  • With respect to dilution risk, although scholarly writings has stated that dilution risk is only applied to “well-known trademarks”, said concept must be also applied in the case of notorious trademarks since Decision 486 does not make a distinction between “notorious trademarks” and “well-known trademarks.”
  • With regard to unfair exploitation of the prestige of a notorious trademark, it is produced when a third party applies a notorious trademark to its own products or services without having the owner’s authorization, thus obtaining the trademark user a benefit without contributing to the payment of the necessary costs for creating and consolidating this positive image.

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