Modifications to the Peruvian Trademark Law

On September 07th, 2018, the Legislative Decree No. 1397 modified the Legislative Decree No. 1075, approving various provisions regarding food products; industrial design; precautionary measures; patents; procedural variations among others, modifying the Legislative Decree No. 1075, which approve additional provisions to Decision 486 of the Commission of the Andean Community.

Among the novelties, we can mention the inclusion of geographical indications and not guaranteed traditional specialties as constituent elements of the industrial property (article 3 of Legislative Decree 1075).

In addition to protecting traditional recipes, the methods of production and/or transformation that correspond to the traditional practice applicable to a product or food; the modification will contribute in giving a greater added value to the product during its stage of commercialization, production or transformation, directions that must be specifically informed to the consumer; providing the national trademark authority - INDECOPI the necessary competencies for its protection and regulation.

On the other hand, the division of industrial design applications is accepted, in two or more applications, being that the national office may require that the division include more than one design. In that sense, each divisional application will benefit from the filing date and, if applicable, from the priority date. Similarly, these are the most important changes to the registration provisions of invention patents:

• Claims (Article 29° D.L. 1075): At the time of submitting the application, you must indicate the claims that will be processed in the fractional application and those that will remain in the application initially filed. Fractioning will not be admitted in case the fractional request includes the same claims or scope that is intended to be protected in the claims of the initially filed application.

• Notification of the patentability examination (Art. 29-A° D.L. 1075): The National Trademark Office notifies the applicant of the second or subsequent patentability tests when it contains new elements to the contents of the previous patentability exams, independently of whether the conclusion stated is reiterated or not. If the conclusion of previous examinations is reproduced without new elements being included, there is no obligation to notify.

• Action review (Art 131 ° DL 1075.) and Appeal (Art 132 ° DL 1075.) Is added to the action review and appeal cannot be based on the modification of the specification, claims or drawings.

Another important amendment that is added is that the National Trademark Authority now has the possibility that, within its scope of investigation, it may demand ex officio -through a precautionary measure or resolution that puts an end to the instance- the adoption of measures that prevent the continuation of acts of infringement of intellectual property rights of third parties, modifying in the same way the expiration of precautionary measures, which will now expire with the decision that definitively resolves the procedure, unless the complaint had been declared unfounded in first instance, in which case they expire with the issuance of said pronouncement.

In the same sense, it establishes the new discretionary power of the administrative authority to apply or not the established criteria (among them the real illicit benefit, the probability of detection, recidivism among others) to determine the sanction and / or the graduation of penalty fee.

Regarding the procedural modifications, from the date on which the file is in the status of being resolved, the parties may not submit additional evidence.

Also, adhesion to appeals is possible at the moment of answering and the new obligation for the administrative authority to issue a report in cases of crimes against industrial property, before the Public Ministry issues an accusation or opinion, for which a period of five (05) business days is granted.

Finally, it is established that, the use of the denomination "registered trademark", "MR" or other equivalent is prohibited along with signs that do not have registration with the competent authority, including the right to initiate a procedure of infringement of trademark rights by the administrative authority.

This article is informative and does not replace the legal advice for specific cases. If you need more information, do not hesitate to contact our Intellectual Property Department.

Author: José David Garaycochea – Intellectual Property Specialist
Law Firm: OMC Abogados & Consultores