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Barreda Moller writes...

First steps towards the definition of reckless opposition

The concept of “reckless opposition” was introduced in the Peruvian trademark system by Andean Decision 486, Common Industrial Property Regime (in force since 01 December 2000), which Article 146 establishes that “Reckless oppositions may be penalized if national legislation so provides.”  In turn, Legislative Decree No. 1075 which approves complementary provisions to Andean Decision 486, Common Industrial Property Regime (in force since 01 February 2009), in its Article 55, provides that reckless oppositions will be sanctioned with a fine of up to 50 UITs (each UIT amounts to approximately US$ 1,200.00).

It is important to mention that subsequent norms and case law have not defined the scope of “reckless opposition” nor have they sanctioned oppositions for being reckless, until very recently, last December 2016.

It is the case that by Resolution No. 3309-2016/CSD-INDECOPI dated 02 December 2016, the Trademark Office for the first time declared reckless an opposition filed on the basis of a Peruvian trademark registration which had been cancelled by a third party on the basis of non-use, before the filing date of the opposition.

In addition to declaring reckless the opposition, the Trademark Office sanctioned opponent with a fine of 2 UITs and established that such fine was being imposed to produce sufficient dissuasive effects.

Background information of the case shows that upon being served with the opposition, applicant replied arguing that as the registration on which the opposition was based had been previously cancelled on the basis of non-use, opponent lacked standing, being the opposition reckless and subject to sanction by the Trademark Office.  When resolving on the opposition, the Trademark Office dismissed the same and ordered that the Technical Secretariat opened a sanctioning process in order to determine if opponent should be sanctioned under Article 55 of Legislative Decree 1075.  As a result of the foregoing, the Technical Secretariat of the Trademark Office initiated an ex officio proceeding against opponent for having supposedly filed a reckless opposition, and granted opponent a term of five (05) working days to submit defense arguments.  The arguments filed by opponent did not satisfy the Trademark Office and therefore opponent was sanctioned with 2 UITs.

It is important to mention that Andean Decision 486, Legislative Decree 1075 and Resolution No. 3309-2016/CSD-INDECOPI do not include a definition of “reckless opposition”.

This said, the significance of Resolution No. 3309-2016/CSD-INDECOPI relies on it being the first indication of a specific conduct which the competent national authority finds to fall within the category of “reckless opposition”, which consists in the filing of an opposition based on a trademark registration cancelled before the opposition filing date.

It is expected that the Trademark Office, in the near future, will render regulations to more accurately define the scope of “reckless oppositions.”

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