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Barreda Moller writes...

Conventional suspension of trademark proceedings

One of the governing principles of the Peruvian jurisdictional system, maybe one of the most important, is the “principle of plurality of instances”, established in Article 139, numeral 2 of the Constitution of the Republic of Peru.

Said general principle, applicable both in judicial and administrative proceedings, guarantees that a judicial or administrative decision can be revised by the hierarchical superior.

With regard to intellectual property, the plurality of instances in administrative proceedings is recognized in the Law on Organization and Functions of INDECOPI and its respective regulations. In accordance with both rules, the Intellectual Property Offices (and the Commissions that make them up) are responsible for deciding in first instance the proceedings in matters within their respective competence, the Intellectual Property Division of the Administrative Court being responsible for deciding in appeal and last administrative instance said proceedings.

Both instances have technical and functional autonomy for the exercise of their respective functions. Nevertheless, said autonomy is not unrestricted in the case of the first instance, specifically in those matters which are subject of second instance decisions which become precedent of mandatory compliance.

The technical and functional autonomy of the two administrative instances in intellectual property matters is reflected in the different interpretative criterion that the Intellectual Property Offices and the Intellectual Property Division of the Administrative Court apply in some matters of their competence.

In trademark matters, the two instances of INDECOPI have shown different interpretations in some precise subjects, for example, in the matter of non-registered trade names (specifically as to the scope of their protection) and in the cases of duplicity of registration (inasmuch as, unlike the second instance, the first instance allows limiting the coverage of an application to prevent the duplicity of a trademark registration).

Other subject in which, for many years, there was disparity in criterion between the first and second instances is referred to the conventional suspension of trademark contentious cases. The conventional suspension is petitioned by mutual agreement of both parties. It is granted only once and for a two-month term at the most.

Said kind of suspension is regulated in Article 319 of the Code of Civil Procedure. Nevertheless, there is no provision for a suspension of this kind in the industrial property legislation, nor in the regulations of powers, organization and functions of INDECOPI, which do establish other conditions for suspension of the proceedings. Said conditions, provided for in Article 25 of Legislative Decree No. 1075 and in Article 65 of Legislative Decree No. 807, are the following:

1. Prior to the beginning of administrative proceedings, a judicial process was started to examine the same subject matter; or

2. A contentious or other issue arises which, in the opinion of the respective competent authority, requires a prior ruling without which the case brought before it cannot be settled.

Despite not being expressly regulated in the legislation of the matter, the Intellectual Property Division of the Administrative Court has had as practice –in application of the principle of efficacy which governs the administrative proceedings – to accept, in appeal, the conventional suspension of trademark proceedings.

As distinguished from the Intellectual Property Division, the first instance was for many years reluctant to accede to the conventional suspension of proceedings under its responsibility as said suspension was not provided for in the legislation of the matter. Nevertheless, we are pleased to have noted that, getting off said practice, the Commission of Distinctive Signs has decided to accept the suspension of contentious proceedings for which it is responsible only once and for a two-month term at the most, when said suspension is petitioned by mutual agreement of both parties.

The Commission bases the acceptance of the conventional suspension on the efficacy and celerity principles which govern the administrative proceedings, as well as on Article 139 of the Code of Civil Procedure, applicable in view of what is provided for in the Fifth Final Complementary Provision of Legislative Decree 1075.

In this way, eventually, both the first and the second instances have the same position as to the acceptance of the conventional suspension of contentious proceedings for which they are responsible, when said suspension is petitioned by mutual agreement of both parties. 

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