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Barreda Moller writes...

Attorney of Record

It is important for trademark owners holding registrations in Peru, to be informed that according to the current criterion of local Trademark Authorities, the attorney of record with respect to a trademark registration will be considered to be the attorney who registered the trademark, or the attorney who renewed the trademark registration, or the attorney who recorded an assignment, i.e. the person who intervened last in any matter related to the particular mark.  Each of the foregoing is exclusive, meaning that if the trademark was registered by attorney A, renewed by attorney B and an assignment was recorded against it by attorney C, the single attorney of record will be considered to be attorney C.  Similarly, if the trademark was registered by A and renewed by B, the attorney of record will be considered to be attorney B. 

Hence, when entrusting renewal of a trademark or trademark portfolio to a new attorney, or hiring a new attorney for purposes of an assignment recordal, the trademark owner should be aware that the effect of such renewal or assignment by a person different from the original attorney of record, transcends the single act of renewal and assignment, respectively. 

If, for instance, a cancellation action or nullity action is filed against the trademark registration, the Trademark Office shall serve notice of such action only to the last attorney as recorded in proceedings of trademark registration, or renewal or assignment, even when such last attorney intervened only for such specific purpose. 

Further consideration is thus suggested when selecting an attorney to renew or assign trademark registrations in Peru.

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