As a result of the enactment of the Free Trade Agreement between Peru and the US on January 15, 2009, Legislative Decree No 1075, which approves complementary dispositions to Decision 486 of the Andean Community, also came into force.

The regulations include important changes in relation to infringement actions.

First, Article 123 states that individuals who refuse to fulfil a precautionary measure will be fined up to approximately US$150,000 (150 Tributary Tax Units). This represents an increase of US$50,000 over the previous maximum fine.

This amount should dissuade misbehaviours that block the enforcement of precautionary measures in connection with infringements against IP rights.

Article 124 considers the possibility of fining the plaintiff up to approximately US$50,000 (50 Tributary Tax Units) for filing malicious infringement actions, which is new compared to the previous regulation. This is arguably a good measure, since it prevents the filing of burdensome infringement procedures by unscrupulous entrepreneurs, whose chief purpose is often to damage a third party's reputation.

Second, Article 126 states that the national authority will be able to impose the payment of costs and expenses on the losing party in an infringement action, or on the Peruvian Trademark Office (INDECOPI).

This is an interesting point, since it raises the possibility that the plaintiff might be liable for the expenses and costs of the action. This is reasonable, since the costs involved in defending an infringement action produce an economic burden for the party unjustly accused. However, defendants still must file a subsequent action with the judiciary in order to request compensation for damages, since the harm caused to a company's reputation by a malicious accusation cannot be remedied through coverage of the company's costs and expenses or through a fine imposed in accordance with Article 124, which is paid to INDECOPI.

Third, the only action that can be taken against a decision regarding an infringement action is to appeal within five working days of receipt of the relevant resolution. It is worth pointing out that, excepting the resolutions imposing precautionary measures, all appeals will have the effect of suspending the action. Also, no new evidence will be allowed in an appeal proceeding.

Alain C Delion and Lilie C 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
lcd@estudiodelion.com.pe
www.estudiodelion.com.pe