Last precedent of mandatory compliance on notoriety of trademarks

Notoriety of trademarks is, undoubtedly, one of the most complex issues in industrial property matters, mainly because it is hard to prove it. Thus, obtaining the notoriety recognition of a trademark in our country may not be an easy task. 

Although notoriety is a dynamic figure, since the establishment of a trademark among consumers may increase or decrease over the years, such dynamism does not mean that the factors that led to the notoriety recognition must be proved each time notoriety is invoked. 

In this regard, both instances of INDECOPI have recognized over the years that, despite the dynamic nature of notoriety, it is not necessary to prove with new evidence the notorious character of a trademark each time it is invoked, provided the factual and legal circumstances that led to the declaration of the trademark as notorious are maintained.

In view of a relatively stable economy as the Peruvian one and with a trademark legislation (Decision 486) dating from the end of 2000, it is reasonable to think that the factual and legal conditions in force at the time of the declaration of notoriety of a trademark are maintained for a period of time. But for how long? or does it depend on the product or service it distinguishes? 

The Intellectual Property Court has put an end to such questions with the last precedent of mandatory compliance on notoriety of trademarks, approved by Resolution No. 0330-2024/TPI-INDECOPI of March 20, 2024. 

In line with the dynamic nature of notoriety, said precedent establishes a maximum period in which the notoriety recognition of a trademark is maintained without the need for further evidence other than the decision which declared said notoriety. In this regard, the referred resolution expressly states the following: 

“[...]

IV. COURT’S RESOLUTION

[...]

Sixth. To establish that this Resolution constitutes a precedent of mandatory compliance in relation to the following:

-   The maximum period that may exist between the date on which the Authority recognizes the notoriety of a distinctive sign and the date on which the owner invokes the rights emanating from said notoriety is 5 (five) years.

-    Once this period has elapsed, the owner must submit the necessary means of proof to demonstrate that its sign continuous to enjoy said status.

[...]”

In this sense, based on what is established by the precedent of mandatory compliance, in all cases in which the notoriety of a trademark already recognized as such is invoked, it suffices that the owner submits as absolute proof of notoriety, the resolution that initially declared said notoriety, provided it has been issued within the previous five (05) years. 

After five (05) years have elapsed since the issuance of the decision that analyzed and recognized the notoriety of the trademark, if the owner wishes to exercise rights over said notorious trademark, it must submit (in the opposition, infringement or cancellation proceedings, as the case may be) relevant evidence that proves that its trademark still holds said status. Submitting only the decision that initially recognized the notoriety will not suffice.