Criteria for the use of trademarks without the consent of owner

Through the Resolution N° 0833-2023/TPI-INDECOPI, INDECOPI has developed criteria for the application of the second paragraph of article 157 of Decision 486, which establishes the requirements that allow a third party to use trademarks without the consent of the owner: (i) use in good faith, (ii) informative purpose and (iii) do not mislead the public about the business origin of the products or services.

Regarding the first requirement, INDECOPI established that the reference to another's trademark must be made proportionally and with due diligence so that the public is not misled about the real origin of the products or services. In relation to the second requirement, it points out that the information must be truthful, objective, and refer to relevant aspects of the service offered by the third party. Finally, regarding the third requirement, the use of the trademark must not give the impression that the product or service in question has a different business origin or that it comes from the same company or from companies economically linked to the owner.

This update, is an improvement in the interpretation and application of article 157 of Decision 486, thus avoiding administrative sanctions that would end up affecting the correct functioning of the market.

This update will have a great implication in the automotive industry, mainly in independent mechanical workshops that usually advertise their services using the trademarks of the vehicles in which they are specialized.

The effects are positive, since independent mechanical workshops will have the freedom to use trademarks in their advertising without the consent of the owners, but at the same time they will have to do in a way according to the established criteria in order to avoid litigation with the big automotive companies.

This update will help boost the the automotive market by generating fair competition between independent and official mechanical workshops, also it will contribute to offer the consumers more options to choose based on transparent and truthful information.

Independent mehanical workshops will seek for specialized advice on intellectual property to ensure that the way in which the trademarks appear in their advertising is framed within the criteria of the INDECOPI, in order to avoid being subject of infringement actions.