Peru: Comments to the Regulation of Legislative Decree 1075

Does The Regulation of Legislative Decree 1075 really bring a significant change in the paperwork and legal procedures for distinctive signs?

On May 29th of 2017 was published in “El Peruano” Diary, the Supreme Decree No. 059-2017-PCM whose purpose is to complement what is established in Legislative Decree 1075. Among other modifications, this rule contains changes regarding the processing of applications, as well as the procedure in the precautionary measures in case of infringements of marks.

Procedure for the rectifications of the requirements for distinctive sign registration applications

When someone requests the registration of a trademark, they must first fill out an application form offered by the Peruvian Trademark Office (INDECOPI). It must also meet the following requirements:

1. The indication that a trademark is requested;
2. Identification data of the applicant or the person submitting the application, or allowing the competent Department to communicate with the interested party;
3. The mark for which registration is sought, or a reproduction of the mark.
4. The expressed indication of the products and / or services for which the registration of the mark is requested; and
5. Proof of payment of the established fees.

But, the interrogation must be asked, what happens if the requirements are not met? Suppose that someone requests a brand and it is necessary to attach the proof of payment of the fee or it lacked to attach a reproduction of the mark either denominational or graphic. The article 52 of the Legislative Decree 1075 establishes the possibility of rectifying such requirements within a period of sixty days following the date of notification, without assigning a file number or date of filing.

If we complied with the provisions of the General Administrative Procedure Act 27444, the Documentary Processing Unit or Bureau of Parties have been imposing the obligation to request all documents before receiving and assigning the file number. In spite of this, as a matter of fact the referred unit was able to receive incomplete applications, assigning them a file number without any inconvenience.

The regulation incorporates the obligation of compliance to the Documentary Processing Unit because it must keep in custody the application for registration of the mark until the applicant complies to remedy such requirements. Also, it should not be assigned a file number and must be in custody, which implies that the file will be withheld and should not be derived to the Distinctive Signs Department until the applicant does not comply with the requirements.

If the period indicated in the previous paragraph elapses without the applicant having complied with all the requirements listed in art. 52 of the Act, the Documentary Processing Unit will return to the applicant the documents that had been submitted.

Returning to the previous example, if the applicant wants to register a mixed brand and did not attach the graphic reproduction of the mark and is asked to attach it, it will have in his/her disposal sixty (60) days to present the graphic reproduction of the mark and thus remedy the omission. Similarly, if you have not paid the fee for the application, you will have in your disposal sixty (60) days to pay and attach the mentioned fee.

The novelty of the abovementioned Regulation is that if the deadline has been breached, the applicant has not complied with submitting the requested documents, the Documentary Processing Unit will return the documents submitted. In this case, any applicant that neglected or forgot to present the requested documents and breached the deadline, the applicant will not lose the documents that were attached into the application form, as was previously the case.

It may also be the case that the omission has not been detected by the Documentary Processing Unit and the file has reached the Direction of Distinctive Signs. In these cases, it will be this Direction who will require the applicant to comply with the missing requirements, for which he will grant a period of sixty days (60), without assigning a file number. In case it does not comply, the request is taken as not submitted.

In practice the latter has always been allowed, since many of the incomplete applications have gone directly to the Direction of Distinctive Signs, without any objection and they have been the ones in charge of requesting the fulfillment of the documents through notifications.

Notification of precautionary measure to temporary depths by e-mail

On the other hand, the Regulation presents an innovation in infringement procedures of industrial property rights. The main modification consists of INDECOPI’s prerogative of notifying any precautionary measures by e-mail to temporary repositories authorized by SUNAT, without having to notify the domicile of these stores.

Any merchandise that enters the territory by an importer is stored in the private warehouses of the importing companies or in the warehouses of the national port company (ENAPU), where the merchandise is kept and under custody by SUNAT (Customs).

If any goods are the result of smuggling activities or imitates the trademark of a third party, this fact constitutes an infringement of trademark law and the holder of the brand can denounce the infringer to the INDECOPI.

It should be noted that SUNAT is generally aware of these events because the owner and the products are registered at the voluntary registration of trademarks of SUNAT (Customs). This voluntary registry is obtained by a request that the entrepreneur applies to SUNAT, in which it declares the ownership of his/her brand, and also, proceed to attach images of its products. Thus, if counterfeit products arrive, SUNAT will have to compare them with the images of the original products included in the application. Through this procedure, the authority may recognize the counterfeit merchandise and may even retain it in Customs to prevent it from entering the Peruvian market.

Let’s suppose if any smuggled merchandise arrives in the territory and it remains in custody in some of the private warehouses authorized by SUNAT. What happens if the authority becomes aware that the merchandise you are trying to enter is counterfeit or a result of smuggling activities? SUNAT will notify the owner of the trademark, who will subsequently file a trademark infringement complaint after collecting images of said merchandise as evidence. The owner may request a precautionary measure in order to seize and immobilize the alledged counterfeit goods, the referred caution is ordered before the Direction of Distinctive Signs.

The mentioned Regulation enables INDECOPI agents to notify these precautionary measures by via e-mail provided by the warehouses, specifying the type of precautionary measure to be complied with and the identification of the merchandise on which it falls.

Previously, in order to issue any precautionary measures, INDECOPI had to emit a resolution ordering the confiscation and immobilization of the merchandise and notifying it at the warehouse address, but this procedure will no longer be necessary because INDECOPI has been empowered to do so via email.

Likewise, in the event that the e-mail of the warehouse is not available, INDECOPI may request in writing that the temporary deposit should indicate the e-mail in which it must be notified, within a period of (05) working days, upon notice of imposing the sanctions established in the Law, by impeding the functions of the competent national authority.

Finally, if the referred legislation has simplified procedures, such as the communication of precautionary measures by electronic mail, in other cases, there has been no substantial change.

Author: Gladys Echegaray – Intellectual Property Specialist
Law Firm: OMC Abogados & Consultores