‘REAL INTEREST’ IN TRADEMARK PROCEEDINGS JURISDICTION REPORT: PERU
Ana Delion and Alain Delion Estudio Delion
Te Special Administrative Board in Lima recently ruled in favour of Perfumeria Lemaitre in its case against Dyvempro over the ‘Menticol’ trademark.
Te board based its decision on the fact that Dyvempro expressed its real interest in Perfumeria Lemaitre’s mark outside of the time allowed by provision of Andean Community Decision No. 486. Dyvempro took two years and one month to register its real interest in the mark, even though the decision calls for it to be raised in parallel with the opposition application.
Te court upheld Perfumeria Lemaitre’s claim to the Menticol mark, and declared the Peruvian patent office’s (INDECOPI) 2007 confirmation of its previous rejection of the mark void. Te court also called on INDECOPI to issue a new decision in compliance with the law.
INDECOPI appealed on the following grounds:
Te sentence is not consistent with the application to the court, since the court is only permitted to decide the case put to it, and INDECOPI’s initial rejection of the mark was not the subject of the case.
Te requirement to demonstrate real interest was met by the additional reference Dyvempro made in its 2004 letter of opposition to the word mark Menticol. Te decision is also false because the real interest requirement is met when the mark is identical to another registered in another Andean country.
In this case, Dyvempro owns a mixed mark in Ecuador, which does not comply with the real interest test, because it is not identical. Aſter this, INDECOPI asked for the company to file a mixed mark application, even though in similar cases in the past, it had not requested an identical mark, but just assumed that there was no real interest in the mark. In the past, it has also required that any such mark should be presented at the same time as the opposition or within two days of it, and never allowed it two years aſter an opposition. But even if, as INDECOPI says, this has nothing to do with the real interest requirement, we don’t understand why it requested the presentation of a mixed mark, since the real interest requirement would have supposedly already been met. Tis is the great contradiction in the grounds of this appeal.
Te Civil Chamber of the Supreme Court upheld INDECOPI’s appeal and declared the first instance court’s decision invalid.
It found that the real interest requirement was met by Dyvempro’s first application for registration, in 2004. However, in this case, the court misrepresented all the criteria used to challenge the first instance decision,
64 World Intellectual Property Review May/June 2011
since real interest was demonstrated with a mark identical or nearly identical to that cited in the trademark opposition.
Precisely because of this, INDECOPI asked Dyvempro to reapply for the mark in 2006 using a mixed mark in order to fulfil this requirement. Tat was clearly illegal, and it is not in its power to make these requirements. It would have been correct to declare the opposition inadmissable.
But the Supreme Court devised another way out and considered that the original word mark application met the real interest requirement.
Tis was the same approach taken by the Supreme Prosecutor in the case, and this leads us to believe that the court had simply transcribed the prosecutor’s arguments, perhaps because of its excessive caseload (the court can take a year to schedule cases). Te Supreme Chamber is the last resort in these cases.
Ana C. Delion is a manager at Estudio Delion. She can be contacted at:
anacd@estudiodelion.com.pe
Alain C. Delion is an intellectual property partner of the international department at Estudio Delion. He can be contacted at:
acd@estudiodelion.com.pe
www.worldipreview.com
“ IN THIS CASE, DYVEMPRO OWNS A MIXED MARK IN ECUADOR, WHICH DOES NOT COMPLY WITH THE REAL INTEREST TEST, BECAUSE IT IS NOT IDENTICAL.”
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