In a globalised market, intellectual property (IP) rights owners are facing more difficulties enforcing their rights against third parties that steal their rights, such as unfair competitors, infringers and counterfeiters. It is important to design a brand protection strategy to successfully enforce rights.
As part of the strategy, IP rights holders need to find, in different jurisdictions, new alternatives to protect their rights. One of the tools that has been used is to obtain the registration of non-traditional trademarks, such as 3D shapes, colours and sound trademarks. Nowadays, it is not only necessary to register word marks and logos, but other distinctive elements, such as packaging, product design, shape and colours, when they comply with the trademark requirements in the law. Unfair competitors, counterfeiters and infringers not only copy word marks and logos but are more and more focused on copying distinctive shapes, designs and colours.
In particular, in the past recent years, the Peruvian Trademark Office (PTO) has been open to granting registration to 3D and other non-traditional trademarks with the aim of providing a broader scope of protection to the holders of IP rights.
Distinctiveness and registration of 3D trademarks
According to provision 134° Andean Community Trademark Statute – Decision 486, non-traditional trademarks can be registered. With respect to 3D trademarks, the law states that the shape of goods may constitute a trademark, as long as it is capable of graphic representation and capable of distinguishing goods or services in the market. Even though the law does not mention it explicitly, an applicant can obtain the registration of a 3D sign (e.g. shape of a product) in any of the Andean countries (Peru, Colombia, Ecuador and Bolivia).
The requirements to apply for registration of a 3D trademark in Peru are almost the same as for a regular trademark, which avoids the applicant having to contend with unnecessary formalities, and allows the applicant to obtain a decision from the authority in approximately two to three months from the filing date of the application, if no office actions or oppositions are filed.
In general, the requirements are the following:
- the name and address of the applicant;
- the 3D trademark, images of the front, back and sides of the design, in order to provide the examiner with all the views of the 3D trademark;
- the list of goods and/or services that the applicant is interested in protecting;
- the official fees for filing a trademark (this is the same cost as for a regular trademark);
- power of attorney, simple copy with no notarisation/legalisation formalities required.
The registration procedure for a 3D trademark can be divided into two steps. The first one is focused on the formalities, which are the above-mentioned. All of them are mandatory and necessary for the next step that is the registrability exam. The next step consists of analysing if the 3D trademark is capable of graphic representation and capable of distinguishing goods or services in the market without being confused with a generic shape or design.
Companies cannot limit their creativity and advertising to words and logos. They should also be able to use shapes of products to reinforce their position in the market. They should use them as distinctive signs that are remembered by consumers and, as you can see, fortunately, the Andean Decision is aligned with this position.
Here we detail some recent successful cases in Peru. The worldwide known luxury and fashion company Chanel has obtained protection for distinctive 3D trademarks of handbags and purses:
The well-known company Chivas Holdings (IP) Limited has also noticed the importance of protecting some distinctive shapes and colours of their products, such as for its CHIVAS REGAL product (alcoholic beverage), as shown below:
Also, Jaguar Land Rover Limited, has registered its motor vehicle as a three dimensional trademark:
In the food industry, the Italian company Ferrero is owner of the following 3D trademark, which is a very famous chocolate package around the world:
In the entertainment and video games industry, the multinational company Sony Computer Entertainment, is the owner of 3D trademarks that protect its distinctive designs of game controllers, as you can see below:
A leading Peruvian painting company Corporación Peruana de Productos Químicos – CPPQ is also owner of 3D trademarks for its bucket shapes and trade dress:
adidas Group, sportwear and sporting goods leading company, registered a 3D ball design ‘TELSTAR 18’ that was the official ball in the Football World Cup 2018:
From only a few examples, we can observe 3D trademarks in different sectors of the Peruvian market, which indicates their importance and necessity these days. It also shows regularity of registration thanks to the Andean regulations applied in Peru.
Initiating nullity procedures against 3D trademarks in Peru
When 3D trademark registrations are granted, IP rights holders sometimes have to face nullity procedures initiated by third parties who claim that the 3D trademarks they are challenging are not distinctive enough.
With respect to nullity procedures, Andean Community Trademark Statute -Decision 486, in provision 172°, states that the PTO may declare, at any time, the nullity of a trademark registration, based on absolute grounds, by request of any third party or ex-officio, when such registration has been granted in violation of the provisions stated in articles 134° and 135° of the decision. According to provisions 134° and 135°, a trademark shall comply with all the requirements stated in the law to be registered as a trademark. It also states the absolute grounds for rejection of a trademark. Lack of distinctiveness is one of the absolute grounds for denial of a trademark registration and therefore a nullity procedure may be initiated against 3D or any other trademarks that lack distinctiveness. There is no statute of limitations to file a nullity action based on absolute grounds (Articles 134° and 135°), so at any time a nullity procedure may be initiated.
In recent cases related to nullity procedures against 3D trademark registrations, the PTO in resolutions Nº 984-2019/CSD-INDECOPI dated February 27 2019 and Nº 1456-2019/CSD-INDECOPI dated March 27 2019, has clarified the elements of distinctiveness in these non-traditional trademarks.
The petitioners usually allege that a 3D trademark was incorrectly granted by the PTO and therefore the owner of the trademark needs to demonstrate that the registration meets the criteria of the Andean Community Decision 486.
The central arguments in this type of nullity procedure are the following:
- The 3D trademark is the usual shape of the product it distinguishes.
- The 3D trademark is descriptive of the product that distinguishes it.
- The 3D trademark is generic in relation to the product it distinguishes.
- The 3D trademark is deceptive in relation to origin, geography, nature, mode of manufacture, characteristics, qualities or suitability for use.
- The 3D trademark provides functional or technical advantages to the product that it distinguishes.
- The owner of the 3D trademark seeks to exercise a monopoly over his trademark, which was registered in bad faith.
Against these arguments, trademark owners must file supportive arguments and evidence that prove the 3D trademark in question is distinctive enough to be protected and, therefore, registered as a trademark. They should:
- file evidence to show that the 3D trademark is not the usual shape of a particular product in the Peruvian market;
- analyse the list of goods and/or services to justify the fact that the 3D trademark is not descriptive of the good/services it distinguishes;
- analyse the list of goods and/or services and the Peruvian market to justify the fact that the 3D trademark is not generic for the product it distinguishes;
- analyse the list of goods and/or services to justify the fact that the 3D trademark is not deceptive in relation to origin, geography, nature, mode of manufacture, characteristics, qualities or aptitude for use;
- file a report that demonstrates the 3D trademark is not functional or does not have technical advantage, but it is a distinctive element that is related to a particular company origin. Should be demonstrated that the shape and design is not an industrial design or utility model, but a 3D trademark. This report shall be reviewed by the patent office.
- file evidence showing that the owner of the 3D trademark is not exercising a monopoly because of its registered 3D trademark.
The PTO accepts a broad range of evidence supporting the distinctiveness of a 3D trademark, including advertising, affidavits, declarations and trademark registrations worldwide. However, one of the most important pieces of evidence is market surveys conducted through specialised entities, which may show and prove that consumers and the relevant market recognise the 3D trademark in question is distinctive enough to be registered as a trademark and is capable of distinguishing goods and/or services and that consumers may link such a trademark to a particular company/business origin.
According to recent cases, it is recommended that when conducting market surveys, one should stay focused on the relevant sectors of the market, not only taking into account the final consumer but also the distributors, dealers and sellers who are familiar with the type of goods that are offered with the 3D trademark. This is because they are the ones that will acquire/trade the products branded with the 3D trademark for which the trademark owner wants protection or other similar products and/ or goods with trademarks of third parties. The final consumer is not the only one that will be familiar with the trademarks in use, and sometimes final consumers do not have sufficient knowledge of the product.
An IP rights owner may decide to file supporting evidence, including a market survey when filing the 3D trademark application, in case the trademark application is rejected for lack of distinctiveness or is challenged by a nullity action initiated ex-officio or a third party based on absolute grounds, such as lack of distinctiveness.
It is important to mention that the declaration of nullity has retroactive effect. It implies that the registration of a trademark was never valid, considering that neither the registration nor the application had the effects foreseen by law. This is because the registration of the 3D trademark did not comply with the requirements of the registration procedure.
Nowadays, we can observe 3D trademarks in different sectors of the international market, which indicates their importance and necessity.
Companies are not limiting their creativity and advertising to words and logos. They also use shapes of products to reinforce their position in the market and are willing to file claims against third parties that intend to use similar designs and shapes.
||Adriana Barrera founder and managing partner of BARLAW – Barrera & Asociados, with an LL.M. In Intellectual Property at University of New Hampshire, School of Law (formerly Franklin Pierce Law Center) LL.M. (USA), 2001 , is a recognized IP lawyer, with more than 22 years of experience, advising global corporations, preparing integral brand protection strategies, litigation and enforcement, unfair competition, copyrights, trademarks and data privacy. She was the President of the IP Commission of the American Chamber of Commerce in Peru (2017-2018). She actively participates in working committees in international associations as: INTA, MARQUES, AIPPI, ASIPI, IACC.|
|Maria Ines Herrera|
||Maria Ines Herrera is a founding partner of BARLAW-Barrera & Asociados with 16 years in practice, with an LL.M. In Intellectual Property at University of New Hampshire, School of Law (formerly Franklin Pierce Law Center) LL.M. (USA), 2012, expert in intellectual property counseling and litigation. With broad experience in handling IP portfolios of international corporations and preparing brand protection strategies. She has handled complex trademark and copyright infringement cases and also has handled complex trademarks contentious prosecution matters.