Happy Holidays to you, your colleagues and all your family! Thanks for your cooperation in 2011 and let’s make better in 2012!

(That’s how we have to do in Peru..!)

Estudio Delion - Latin American Attorneys

A REALITY CHECK IN TRADEMARK CASES

We welcome the decision issued by the Peruvian Trademark Office (INDECOPI) that upheld the opposition against the registration of the trademark BILLALCON SURFERS and logo in Class 25 by Jose Almeida Contreras.

Clearly the registration would damage the interests of our client GSM (Operations) from Australia, owner of the well-known brand BILLABONG, which uses the same type of letter font in some of its logos.

Author: Fayssy C. Delion

Regrettably, the first administrative instance issued Resolution N º 1020-2010/OSD dated May 3, 2010, using an unusual definition of the local surfing apparel market, found that products covered by the mark in conflict produced a different pronunciation and intonation, despite of the fact that BILLALCON SURFERS and BILLABONG shared some similar letters and sounds. They also added that the requested trademark included figurative elements, while the registered brand was merely a group of letters that produce a different visual impression.

The second administrative instance, reviewing similar jurisprudence related to applicants who have applied for similar marks to BILLABONG in the past, issued the Decision No. 581-2011/TPI, dated March 16 2011, finding that the presence of BILLA as well as the syllables (I-A-O) in the same phonetic sequence caused a likelihood of confusion among consumers. In consequence it overturned the first administrative instance decision and denied the requested mark.

We believe this case sets a very good precedent, which reflects the feelings of those who have impotently watched similar marks being granted simply because they were not copied exactly. In this case, the counterfeiters changed the final elements of the mark BILLABONG, in order to achieve a distinction that supposedly prevented the risk of confusion, but which in practice was totally false.

We hope this trend continues in opposition cases, because it demonstrates the fact that the Peruvian trademark office is taking into account the practical aspects of each case, and not just following old recipes that coldly analyse, allowing clearly-similar brands coexist in the market, favoring confusion and increasing market inefficiency.

We strongly believe that this case is an example of INDECOPI sharpening its process to protect the market against counterfeits, as well as helping all market participants to find sufficient and correct information before taking a decision. This in turn makes the market more efficient and benefits entrepreneurs and consumers.

Estudio Delion - Latin American Attorneys
www.estudiodelion.com.pe

PROPER SANCTION TO THE RECURRENT OFFENDERS

Resolution 1181-TPI/INDECOPI, issued on June 6, approved an $82,290 fine for a trademark infringer  that illegally sold pipes bearing a trademark owned by a third party. This is considered to be a drastic yet justifiable sanction given the nature of the infringer’s illegal conduct.

In this case, the defendant offered, through its website, products bearing a trademark belonging to Estudio Delion client Crane Co., which is based in the US.

Once the infringement complaint was filed, the defendant argued that it was offering legally purchased products. This meant that the case would focus on trademark exhaustion because the defendant argued that Crane could not take any action as the pipes were legitimate products. The defendant pointed to a number of invoices that suggested that its suppliers had legitimately purchased the goods. 

Autor: Alain C. Delion

The Administrative Court of First Instance of the National Institute for the Defense of Competition and Protection of Intellectual Property (Indecopi) stated that as Crane could not prove that these documents were false, it had to find that the infringement complaint against the defendant was unfounded.

Crane appealed against this decision. Indecopi’s second instance court applied the legal principle that whoever affirms a fact must prove it and said that it was up to the defendant to substantiate its arguments. As the defendant was not able to do so, it was fined to set an example.

Autora: Lilie C. Delion

The resolution represents a good precedent. It is useful as a lesson to those that repeatedly infringe third-party trademark rights. Before, they could be confident that any infringement charge would result in a relatively low fine, which only encouraged them to continue infringing. With this resolution, Indecopi clearly states that if repeat infringers are caught, their punishments will hit them hard economically, and in a worst-case scenario, an infringer will be bankrupted.

Preventing hidden commercialisation of GM foods

http://www.estudiodelion.com.pe/paginas/circulares.htm A resolution stated that food prepared from transgenic products must contain this information on its label, whether or not there is proof that the products are harmful to health.

A recent discussion on the regulation of the implantation of transgenic or genetically modified crops in the country makes it pertinent to mention a decision issued by the Office for the Defense of Competition (INDECOPI) in 2010 that can be used to prevent hidden commercialisation of these products. This resolution stated that food prepared from transgenic products must contain this information on its label, whether or not there is proof that the products are harmful to health. Genetically modified (GM) foods are foods derived from genetically modified organisms. Genetically modified organisms have had specific changes introduced into their DNA by genetic engineering techniques. These techniques are much more precise than mutagenesis (mutation breeding), where an organism is exposed to radiation or chemicals to create a non-specific but stable change. GM foods were first put on the market in the early 1990s. Typically, genetically modified foods are transgenic plant products: soybean, corn, canola and cotton seed oil. Discussion on the harm of these foods to health arises because the use of biotechnology in the production of consumables marks an important difference from conventional or organic production methods. INDECOPI concluded that the topic under discussion was not the right of consumers to understand the current or remote risk of consuming the food, but their right to the knowledge of the transgenic production methods. We believe that the right of information should go beyond outlining the quality of GM food supplies, because many people do not know the real difference between a transgenic consumable and another that is not. Such information should also warn about the possibility that GM food may produce adverse health effects in the future. These products may not in fact produce any negative effects in the short, medium or long term, but it could happen that these effects occur. Not informing consumers about this possibility is an unacceptable omission, because lack of information may have an important influence on the consumer’s decision.  However, the requirement for some information is a good starting point. With increasing information about the possibilities of negative effects of GM foods, many consumers may make a more informed choice about whether to purchase products containing these consumables. Autores: Alain C. Delion Fayssy C. Delion