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Barreda Moller writes...

Legislative Decree 1309: Some modifications to Legislative Decree 1075

By means of Legislative Decree 1309 –Legislative Decree of Simplification of Administrative Proceedings regarding Intellectual Property before the Competent Authorities of the National Institute for the Defense of Competition and the Protection of Intellectual Property INDECOPI- in force since January 01,  2017, some articles of Legislative Decree 1075 –Legislative Decree which approves Complementary Provisions to Decision of the Andean Community Commission which establishes the Common Regime on Industrial Property – have been modified in order to simplify and optimize the services provided by INDECOPI regarding Intellectual Property.

The following are some of the modifications of the cited rule:  

1) Article 4, paragraph 4.4.- Competent Authorities:

 “The Office of Distinctive Signs, through its respective Commission, takes cognizance in appeal and last resort of all appeals filed against first instance resolutions in connection with non-contentious proceedings.” 

We understand that this modification seeks celerity in the issuance of resolutions in cases of appeal in non-contentious proceedings, such as appeals against sua sponte denials of an application for trademark registration. 

Thus, while the Court Specialized in Intellectual Property of INDECOPI has a 180-working day term to decide in appeal proceedings, the Commission of Distinctive Signs, which will decide in appeals of non-contentious proceedings, will do it in a 30-working day term.  

This fact would also have impact on the time that the Court Specialized in Intellectual Property will take to decide in appeals it will continue to hear, since by reducing the work load, we could expect the issuance of resolutions in a term shorter than 180 working days. 

It is worth mentioning that resolutions issued by the Commission of Distinctive Signs (appeal proceeding) exhaust the administrative remedies, which means that only judicial action could be filed against this resolutions.  

With respect to the appeals against resolutions not stipulated in paragraph 4.4 of article 4, they will be decided in appeal and last administrative resort by the Court Specialized in Intellectual Property of INDECOPI. 

2) Article 71, paragraph 71.2.- Cancellation of registration: 

 “(…)

71.2 In case the petition for cancellation is filed without annexing the corresponding power-of-attorney, the petitioner will have a sixty (60) working day deadline to present it. Once said requirement is met, the other party must be served with the petition for cancellation, otherwise and expired said term, the petition for cancellation will be acknowledged as not having been presented. Under no circumstance, the power-of-attorney must be required if it can be directly obtained by the Office of Distinctive Signs, according to law. 

(…)”. 

Before Legislative Decree 1309 came into force, not filing the petitioner’s power-of-attorney in a non-use cancellation action, did not prevent the owner of the trademark from being served with said cancellation action. 

In the abovementioned case, in parallel with the service of process of the petition for cancellation, the petitioner was granted a 60-day term to present the corresponding power-of-attorney, it being possible that the served party answered the cancellation action and then said action were acknowledged as not having been presented, as the petitioner did not complied with presenting the required power-of-attorney.  

The instant modification would be preventing the unnecessary prosecution of an action that for lack of compliance with the filing of the corresponding power-of-attorney will be acknowledged as not having been presented. This modification would seek to prevent the use of unnecessary remedies both by the owner of the registration and by the competent authority.  

3) Article 72.- Service of the petition for cancellation: 

“The competent office serves the petition for cancellation on the owner of the trademark registration at the address that the owner has indicated in the application for registration, renewal or modification of the trademark object of the cancellation petition, according to Article 69. In cases where the owner of the trademark registration cannot be served according to the aforementioned criteria, the owner will be served at the last address said owner indicated in a nullity or cancellation proceeding prosecuted before the competent office. 

In cases where the owner of the trademark registration cannot be served as established in the preceding paragraphs, legal notice by publication proceeds, according to the provisions contained in the Code of Civil Procedure.  Cost of the legal notice is assumed by the cancellation petitioner.” 

It is worth mentioning that Article 69 of Legislative Decree 1075 establishes that“In the event of a change regarding the representative or address for service of process of the owner of a distinctive sign while the registration or license are in force, if applicable, the owner of the registration must inform of said change to the competent authority so that it is entered in the case file where the last record has been made, whether it is registration, renewal or modification which leads to the change of owner of the distinctive sign. 

In this respect, we understand that in cases where the owner of the trademark registration cannot be validly served at the address indicated in the process of registration, renewal or modification of the trademark sought to be cancelled, before proceeding with the legal notice by publication, the competent authority will try to serve the owner of the registration at the address that said owner has indicated in a nullity or cancellation proceeding previously filed against the same trademark registration which cancellation is sought.   

We understand that this modification intends to exhaust all possible means of service of process of a non-use cancellation before ordering the petitioner to proceed with the legal notice by publication, which will be performed only as last remedy in this type of proceeding. Therefore, this modification would seek not only to prevent expenses entailed by the legal notice by publication but also to generate certainty of a valid service of process.

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