Trade mark counterfeiting and product piracy are common in Peru as in all of Latin America. This criminal activity is presented in a variety of forms, but most often involves someone trying to apply for the registration of a trade mark, which is famous in another country but has not yet been registered in Peru.
For example, third parties have applied to register the brands shown below in Peru. The football club brand owners – Manchester United PLC (Great Britain), FC Bayern München AG (Germany), Futbol Club Barcelona (Spain) and Club Atlético River Plate AC (Argentina) – filed oppositions based on the fact their trade marks are well known in the marketplace.
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(Application 201345) |
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(Application 202029) |
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(Application 209545) |
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(Application 201340) |
The original owners did not have the evidence usually required to prove bad faith, such as business documents (letters, contracts, invoices) showing that they had developed a business relationship with the applicants or documentation that could prove the importation of goods by the opponents using these trade marks to Peru. However, the brand owners did provide the examiner with extensive publicity in the media (magazines, newspapers, TV and radio) proving that their football clubs' names were famous brands in the marketplace.
Taking this into account, the Peruvian Trade Mark and Patent Office (INDECOPI) stated that the oppositions were well-founded by pointing out that it was obvious that the applicants knew that these brands belonged to third parties.
We think this interpretation is right as well as justified and supported by Peruvian IP regulations, which prohibit the granting of a trade mark that has been applied for in bad faith, despite the fact that there is no conclusive evidence that proves the bad faith, since this can be inferred from the market by itself as well as from the knowledge of such a market by the people. This doctrine is called "circumstantial evidence".
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| Alain Delion and Lilie Delion |
Estudio Delion
Las Acacias 898, Urb. Las Palmeras
Los Olivos, Lima 39, Peru
Postal address
PO Box 27-0044, Lima 27, Peru
Tel: +51 1 523 9147 / 522 0360
Fax: +51 1 521 0685
vcd@estudiodelion.com.pe
www.estudiodelion.com.pe
