Legitimate interest in trademark nullity actions

Decision 486, Industrial Property Common Regime, grants individuals the right to request the granting or the acknowledgement of any right in a constituent element of the industrial property, as well as the possibility of filing several legal actions to protect such rights. These actions are the following:

1. Opposition to an invention patent application. Decision 486 establishes in Article 42, first paragraph: “Within a period of 60 days following the date of publication, any person with a legitimate interest may, one time only, submit valid reasons for opposing to the patentability of the invention …”

2. Nullity of an invention patent.  Decision 486 establishes in Article 75, first paragraph: “The competent national authority may, either sua sponte or at the request of a party, and at any time, declare a patent null and void, where ….”

3. Annulment of an invention patent. Decision 486, establishes in Article 77: “The competent national authority may, if a patent has been granted to a person who has no right to it, annul that patent.  Nullity action may be initiated only by the person who has the right to obtain that patent …”

4. Opposition to a utility model patent application, nullity or annulment of a utility model patent.  Decision 486 in Article 85 establishes that rules which regulate invention patents are applicable to utility models.

5. Opposition to an application for registration of a layout-design of integrated circuits. The Andean rule establishes in Article 95: “any interested person will be able to file a supported opposition …”

6. Nullity of a layout-design. The Andean Decision establishes in Article 108 “The competent national authority may, either sua sponte or at the request of a party and at any time, declare the registration of a layout-design null and void, where: ….”

7. Annulment of a layout-design registration. The Andean Decision establishes in Article 110: “The competent national authority may, where a layout- design registration has been granted to a person that has no right to it, annul that registration. The annulment action may be brought only by the person who has the right to obtain the registration .…”

8. Opposition to the application for registration of industrial designs. The Andean Decision establishes in Article 122: “Within a period of thirty days following the date of publication, any person with a legitimate interest may, one time only, file opposition …”

9. Nullity of an industrial design registration. The Andean Decision establishes in Article 132: “The competent national authority may, either sua sponte or at the request of a party and at any time, declare the registration of an industrial design null and void…”

10. Opposition to an application for trademark registration.  The Andean Decision establishes in Article 146: “Within thirty days following such publication, any person having a legitimate interest may, one time only, submit valid reasons for opposing to the registration of the trademark”

11. Nullity of a trademark registration. The Andean Decision establishes in Article 172: “The competent national authority shall, either sua sponte or at the request of a party, and at any time, declare the registration of a trademark absolutely null and void when it has been granted in contravention of the provisions of articles 134, paragraph one, and 135.  The competent national authority shall declare, either sua sponte or at the request of a party, the relative invalidation of a trademark registration when granted in contravention of the provisions of Article 136 or obtained in bad faith.”

12. Opposition to the application for registration of commercial slogans, collective trademarks and certification trademarks are regulated, according to the Andean Decision by the provisions on trademarks.  Consequently, the applications for registration of these industrial property elements, as well as the nullity actions regarding these elements, are regulated by the trademarks provisions cited in the preceding paragraphs.

13. Trade names are regulated, according to Legislative Decree 1075, Article 87, by the trademark provisions contained in Decision 486 and in the cited Legislative Decree.

From the abovementioned it is deduced, in relation to all industrial property elements, either patentable or registrable distinctive signs or novel ideas, that:

A)  Oppositions to their registration can be filed by the person having legitimate interest.

B)  Annulment actions can be filed only by the person having legitimate interest.

C)  Patent or trademark registration nullity actions can be filed by any person.

Then, the question is, what is legitimate interest? The purpose of this article is not to summarize what national and international doctrine says on the subject and its comparison with the concepts of interest to act and legitimacy to act.  Our answer is that in the context of industrial property rules, the concept of legitimate interest can be defined as the ability to demand something from somebody because there is an inter-subjective conflict of interests between them. In short:

A)  To oppose to the application for registration of an industrial property element, the opponent must demonstrate that he/she is owner of a right that would be affected by the granting of such element.

B)  Annulment of an invention patent, utility model or layout-design registration can be filed only by the person who alleges to have the right to be granted such patents or trademark registration.

Consequently, in the case of oppositions to applications for the registration of trademarks, opponent must demonstrate that he/she is the owner of a right that would be affected by the granting of the applied-for mark.  In other words, opponent must be the owner of the right on which the opposition to the trademark registration is based.  These rights are established in Decision 486, Article 136 and are the following:

1. Trademarks registered or applied-for earlier.

2. Preexistent trade names.

3. Commercial slogans registered or applied-for earlier.

4. Distinctive signs protected abroad, which are applied-for without the authorization of the owner, representative or distributor or person authorized to use the signs in the country.

5. The name of legal entities or individuals, their signature, title, nickname, pseudonym, image, portrait, or caricature

6. Industrial property rights or copyright.

7. The name of indigenous, Afro-American, or local communities or denominations, words, letters or signs as are used to distinguish their goods, services or methods of processing or that constitute an expression of their culture or practice.

8. Well-known distinctive signs.

Any individual or legal entity which takes part in the market and which would be prevented from using said sign if it is granted trademark registration will be also able to oppose to the application for registration of a trademark if said trademark lacks distinctiveness with respect to the goods for which it has been applied for.

Nevertheless, in the case of actions seeking the nullity of a registered trademark, the petitioner does not have to demonstrate his/her legitimate interest. This means that any person can file a nullity action against a registered trademark for lack of distinctiveness or for violating any of the aforementioned rights and established in Decision 486, Article 136, without being owner of these rights.

In other words, a person we will call A can request the nullity of a trademark registered in the name of a person we will call B, for being said trademark mistakable for a trademark registered or applied-for earlier, owned by C. This nullity request will be granted leave to proceed and can even be declared well-grounded, declaring the nullity of B’s trademark, even when C enters an appearance in the case and declares that it does not feel harm by the granting of trademark B.

National case law is clear in this respect, as well as the prejudicial interpretations by the Andean Court of Justice, an entity in charge of the authentic interpretation of the Andean Decision. By way of proof, we cite the following resolutions:

• Resolution No. 3546-2016/CSD-Indecopi issued by the first administrative instance, the Trademark Office, in connection with case file Nº 677848-2016, nullity action filed by Ruiz Vilela de Rivas Santos against registration of service mark RASSON BRASAS GOURMET which distinguishes services in class 43, with Registration Certificate No. 85323 in favor of Nossar Adaui Miguel Fredy. This resolution states: 

“The defendant stated that the plaintiff lacked legitimate interest to file the nullity action since the plaintiff was not owner of the trademarks on which the nullity action was based.

In this respect, we must take into consideration that in accordance with paragraph two of Article 172 of Decision 486, the competent national authority will declare “sua sponte” or at the request of any person, the relative nullity of a trademark registration when said registration has been granted in contravention of what is established in Article 136 or when it has been granted in bad faith.

In this sense, it is verified that nullity can be requested by any person, so it is evident that law does not demand proving the legitimate interest as requirement for filing a nullity action. 

• Resolution No. 2073-2010-TPI-Indecopi, issued by the second and last administrative instance, the Administrative Court, in connection with case file No. 379924-2009, nullity of PELEMAX POWER ELECTRIC and logotype, with Registration Certificate No. 141743, which regarding the legitimacy for requesting the nullity of a trademark states the following:

According to Article 172 of Decision 486, the competent national authority will declare “sua sponte” or “at the request of any person”, the relative nullity of a trademark registration when said registration has been granted in contravention of what is established in Article 136 or when it has been granted in bad faith. This action will prescribe after five years counted as from the date the challenged registration was granted.

Moreover, the Andean Community Court of Justice in the prejudicial interpretation in connection with Proceedings Nº 09-IP-20107 has stated that:

“The relative nullity is generated when a trademark registration has been granted in contravention of the grounds for unregistrability established in Article 136 or when registration has been granted in bad faith.  Although it has as purpose to protect the interest of a particular third party, who must file the action within a specific term, 5 years, it can be also filed by any person. In fact, according to the cited provision, the competent national authority is in charge of declaring, “sua sponte” or at the request of any person …”

Moreover, in Proceedings No. 121-IP-20098, the Andean Court has stated that:

“Therefore, Article 172 of Decision 486, first and second paragraphs, states that the competent national authority will declare “sua sponte” or at the request of any person and at any time, the absolute nullity of a trademark registration when it has been granted in contravention of what is established in Articles 134 first paragraph and 135; and, will declare the relative nullity of a trademark registration when it has been granted in contravention of what is established in Article 136 or when it has been granted in bad faith.

The Court has indicated that the competent national authority for declaring the nullity of a trademark is the administrative authority in charge of the Industrial Property Registry or the judge established by the national legislation, who has authority to decide on the nullity under discussion.

In this respect, the Court has stated: “In the first case, the competent national authority –administrative or judicial- can declare the nullity of the registration, according to the procedure established by the national legislation.  The participation of said authority in this class of actions allows protecting the public interest.”

In the second case, unlike the regulations previous to Decision 486, no legitimation is required for a third party to demand the nullity of the registration of a sign.”

 

•  Prejudicial interpretation No. 65-IP-2015, issued by the Court of Justice of the Andean Community, at the request of the Superior Court of Justice of Lima in Case File No.  7046-2010-0-1801-JR-CA-14 in connection with the administrative contentious action against resolution No. 2073-2010/TPI-INDECOPI. In this prejudicial interpretation of the Andean rule, the Andean Community Court of Justice, regarding the legitimation for filing relative nullity actions, states the following:

“3. LEGITIMATION FOR FILING A RELATIVE NULLITY ACTION

40. The plaintiff MULTIMAX PERÚ E.I.R.L. stated that GLORY ESTABLISHMENT did not demonstrate the representation of the owner of the pseudonym PELÉ, so it does not have legitimation for filing the nullity action. On the other hand, GLORY ESTABLISHMENT declared that it has demonstrated the legitimacy for filing a nullity action since it has been demonstrated the existence of an authorization which authorizes the defense of interests of Edson Arantes do Nascimento. Therefore, the Court will interpret the proposed matter.

41. Article 172 of Decision 486 makes the difference between absolute nullity and relative nullity, in this case there are grounds for relative nullity, since said nullity was requested on the basis of a registration granting contrary to Article 136 paragraph e) of Decision 486.

42. The same article in paragraph one establishes that “The competent national authority will declare “sua sponte” or at the request of any person and at any time the relative nullity of a trademark registration when it has been granted in contravention of what is established in Article 136 or when it has been granted in bad faith (…)”. (Underlining is ours).

43. Therefore, regarding who can file relative nullity actions of a trademark registration, the transcribed rule is clear when stating that any person can file a nullity action, for which it is not necessary to prove that said person has legitimation to do it.”

Consequently and to conclude the abovementioned, we recommend the following:

1. If you applied for the registration of a trademark and somebody opposes, verify if said person has legitimate interest.  If the person does not, you must inform of it to the Trademark Office; the Office will reject said opposition.

2. If you are owner of a registered trademark and somebody files a nullity action against said registration based on trademarks, trade names, distinctive signs or copyright, names of legal entities or individuals or name of indigenous, Afro-American or local communities, or well-known distinctive signs, in relation to which the nullity petitioner does not have any rights, do not lose time stating that the petitioner lacks legitimate interest, instead you may answer the action demonstrating that your registered trademark does not affect any of the cited rights even when none corresponds to the petitioner.