Recent pronouncements issued by the Peruvian Trademark Office (PTO), signal a significant development in the enforcement of trademark rights against counterfeit goods. Rather than limiting enforcement measures to the direct infringers, the PTO has imposed a series of obligations on commercial landlords aimed at preventing the continued commercialization of counterfeit products within their premises.
These decisions illustrate an increasingly proactive enforcement strategy whereby landlords are expected to cooperate with trademark authorities and adopt preventive measures designed to deter counterfeiting.
In this sense, the PTO has distinguished between imperative measures, which are mandatory, and exhortative measures, which, while not formally coercive, strongly encourage the adoption of compliance mechanisms.
Among the mandatory obligations imposed on landlords are the following:
Publication of permanent notices informing tenants and visitors that the use of commercial premises for the storage, manufacture, distribution, sale, or offering of counterfeit products is unlawful.
Disclosure of whether the individuals under investigation are members of the commercial association or tenants of the premises.
Submission of copies of lease agreements executed with the individuals under investigation, where applicable.
Identification of the members who own or control the commercial stands where infringing products were seized.
In addition, the PTO has urged landlords to implement a number of preventive compliance measures, including:
Reporting suspected counterfeiting activities to the authority.
Requesting official documentation to verify the identity of prospective members, tenants, or assignees before entering into commercial agreements.
Including contractual termination clauses in all future lease agreements permitting termination where the premises are used for counterfeiting activities.
Incorporating the same contractual provisions into lease renewals.
Establishing internal disciplinary mechanisms, through the General Assembly of the association, to sanction members engaged in the sale of counterfeit products, when applicable.
These measures are grounded in Article 115 of Legislative Decree 1075-approving supplementary provisions to Decision 486-, which grants broad investigatory and enforcement powers to the PTO.
In particular, Article 115 allows the authority to require individuals and legal entities to adopt measures necessary to preserve evidence and facilitate investigations. More importantly, subsection (e) expressly empowers the authority, through precautionary measures or final resolutions, to require both public and private entities to adopt measures preventing the continuation or repetition of acts committed by third parties involving the unauthorized use of industrial property rights.
Although Article 115 does not expressly refer to landlords, its broad wording has enabled the PTO to require shopping center operators and commercial gallery administrators to implement measures aimed at preventing trademark infringement occurring within their facilities.
The recent resolutions suggest that the PTO increasingly views commercial landlords as important participants in the fight against counterfeiting. While these entities are not considered direct infringers merely because counterfeit goods are sold on their premises, they are expected to exercise a reasonable degree of oversight and cooperation once infringing activity has been identified.
These recent pronouncements reflect an evolving enforcement policy in Peru, one that expands the role of intermediaries in intellectual property enforcement.
