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Barreda Moller writes...

Online sales as proof of use of the trademark

The registration of a trademark imposes upon its owner the obligation of proving its use, since in this way the distinguished product or service enters the trade circuit and becomes available to consumers, thus effectively accomplishing its function in the market

Although years ago the way of proving the use of a trademark was through classic means involving a physical support, today’s e-commerce global phenomenon has changed the traditional way of performing commercial transactions, resorting to technology as an ideal means for carrying out acts that have legal consequences.

This new reality of the use of the virtual platform to shop at an e-store where products are worldwide available to consumers through the web page of the selling company, has brought by the hand challenges when trying to prove the use of the trademark distinguishing such products. The premise is to prove – according to Article 166 de Decision 486 – that products or services distinguished by the trademark have been introduced into commerce or are available in the market.

Consequently, it is understood that the use of a mark in Internet will represent its use in a member country of the Andean Community, if said use has commercial effect in said member country.

In this regard, the Intellectual Property Division of INDECOPI has issued several decisions stating that to prove the use of a trademark it is not essential that the products identified by said trademark be manufactured and sold in and from Peru or other country of the Andean Community, the only requirement being that said products have been acquired by consumers domiciled in Peru or in any other country of the Andean Community, thus recognizing that presently online purchases have become a frequent means for purchasing products from certain company which does not have a branch office or commercial establishment  in our country, and that said act is considered the actual commercialization of products bearing the specific trademark.

One of the first decisions in which the Intellectual Property Division applied said criterion was Decision Nº 1270-2011/TPI-INDECOPI, validating the purchase orders which proved that Victoria´s Secret Stores Brand Management, Inc. had sold its VICTORIA SECRET products to Peruvian consumers through Internet, thus recognizing the use of the trademark.

In this sense, the proof par excellence of the use of a trademark when sales are online are the printouts of files corresponding to electronic purchase orders of Peruvian consumers, as well as the purchase orders issued by the company in favor of people domiciled in Peru and the respective proofs of delivery of the products – documents which must tally with one another and which must indicate the trademark that distinguishes the products or their identifying code in the catalog – as they allow validly proving the sale of products to Peruvian consumers who order their goods by internet. Online advertising and catalogs constitute further evidence, which are important as additional means of proof when followed by the actual commercialization of the products.

Therefore, the aforementioned documents are suitable, appropriate and effective evidence which is relevant and must be produced to validly prove the use of a trademark in the context of the electronic transactions performed in the current global market.

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