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Barreda Moller writes...

Well-known marks and cancellation due to lack of use

Well-known marks are not subject to cancellation due to the lack of use in our country, but it is required to demonstrate that the mark intended to be canceled matches the sign which is well-known among consumers.

Contrary to the interpretations made in past decades by our trademark authorities, on the subject of discussion related to the defense of a well-known sign registered in Peru, in front of a non-use based cancellation filed by a third party, there is no doubt that currently in our country, and from the issuance of Court Decision No. 2078-2010/TPI-INDECOPI (which was mainly based on the arguments presented in the pre-judicial interpretations given by the Andean Community Court of Justice, in proceedings No. 125-IP-2007 and No. 180-IP-2006, and in many diverse doctrinary comments), there is a full recognition to the notoriety of a mark as a valid defense against an action of cancellation due to the lack of use.

In effect, said Resolution No. 2078-2010/TPI-INDECOPI, perfectly stated in our country that well-known marks are not subject to cancellation for lack of use, since even though Decision 486 of the Andean Community did not expressly establish the inadmissibility of an action of cancellation for not using a well-known mark, this special protection currently acknowledged to the well-known marks is derived from the Community Rules that govern the well-known marks, as well as the principles and approaches inspiring the Trademark Law. In this sense, it is important to specifically mention the Rule contained in Article 229, Decision 486 which states:

“Article 229.- The notoriety of a mark shall not be denied because:
(…)
b) it has not been nor is it being used to distinguish goods or services or to identify activities or premises in the Member Country; or,
(…)”

The Andean Community Court of Justice, and afterwards our local trademark authorities, have considered with accurate criteria that said Rule, in some way, attenuates the general principle of effective and real use of a mark, as it protects the well-known mark within the territory of the Andean Community, even though said mark has not been used, or is not being used to distinguish the corresponding goods or services.

The aforementioned interpretations related to the protection of the well-known mark are also supported by the approaches ruling the Trademark Law, related to the promotion of the business activity and the unfair competition activity. It is unfair to allow a third party benefiting from the prestige of another one; said third party pretending to benefit from the high commercial value of a well-known mark within the Andean Community. Additionally, since well-known marks do not have to be necessarily registered in our country, the cancellation of a well-known mark would not generate any prior right to registration in favor of the one obtaining the cancellation. Therefore, said action would become meaningless.

In line with the foregoing, Resolution No. 2945-2013/TPI-INDECOPI issued in File No. 335516-2007, in which it was discussed the cancellation of CRISTAL FERRAND F & LOGO trademark, Certificate No. 5293, clearly stated the following:

“From the above, it is understood that the Andean Community Court of Justice has concluded that it is not feasible the cancellation of a well-known mark. This, besides the fact that it is unfair that somebody benefits from someone else’s effort, as the well-known marks do not have to be necessarily registered, the cancellation of a well-known mark would not generate any prior registration right in favor of the individual obtaining the cancellation. Consequently, said action is meaningless”.

However, in that case it was particularly established that even though the summoned party had demonstrated the well-known characteristic of CRISTALERÍAS FERRAND & LOGO mark, said sign was substantially distinguished from CRISTAL FERRAND F & LOGO, Certificate No. 5293, subject matter of cancellation; thus, it was decided the cancellation of the latter mark despite the huge coincidences in grammar and phonetics between the well-known mark CRISTALERÍAS FERRAND & LOGO and the cited mark subject matter of cancellation, as both share the main denomination FERRAND and the F logotype.

This last interpretation of the Indecopi Court is very questionable since the acknowledgment of notoriety to CRISTALERÍAS FERRAND & LOGO mark was not useful as a valid defense to defend the validity of the “derivative” mark CRISTAL FERRAND F & LOGO, but the aforementioned criteria determines that in future cases the owners of well-known marks subject to non-use based cancellation action shall provide notoriety evidences that correspond exactly to the well-known mark subject matter of cancellation, since if the same are related to variations of said mark, there is a high possibility of not being considered valid to maintain the validity of the well-known mark challenged by cancellation.

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