Until quite recently, in the case of ex officio denials, the Trademark Office was applying the criterion of considering as impediment for the registration of a trademark only the trademarks registered in the class in which said trademark had been applied for.
For example, in a multiclass application for trademark registration in classes 18 and 25, only opposed in class 18 on the basis of confusion risk with a trademark registered in the same class 18, the Trademark Office did not cite the trademark of class 18 as impediment to deny the registration of the applied-for trademark in class 25 but solely against the registration of said trademark in class 18.
Nevertheless, since some months ago, the Trademark Office is applying a new criterion, although only in connection with the multiclass applications for registration.
This is the case of Application No. 772805-2018, filed to distinguish products in classes 29, 30 and 32, against which a third party filed opposition only against the registration of the applied-for trademark in class 32, on the basis of confusion risk with trademarks registered in the same class 32.
In this case, by means of Resolution No. 2661-2019/CSD-INDECOPI, of June 12, 2019, the Trademark Office denied ex officio the registration of the applied-for trademark in class 29, as the Authority considered that the products to be distinguished in said class were related to the products distinguished by the registered trademark in class 32, even though the owner of the trademark registered in said class had not opposed the registration of the applied-for mark in class 29 but only the registration of said trademark in class 32.
As it can be appreciated, this new criterion recently adopted by the Trademark Office could constitute a disincentive for the filing of multiclass applications for registration, since there would always exist the risk that a trademark be ex officio denied on the basis of a trademark registered in a different class, despite not having been object of opposition.