Latest news on the regime of protection of traditional specialties guaranteed and on the regime of goegraphical indications

By means of Supreme Decree No. 170-2021-PCM published in the official gazette “El Peruano”, on November 16, 2021, the Regulations on the Regime of Protection of Traditional Specialties Guaranteed and on the Regime of Geographical Indications were approved.

In this respect, it is worth remembering that Article 3 of Legislative Decree 1075, which approved complementary provisions to Decision 486 of the Andean Community Commission, modified by Legislative Decree 1397, recognized the Traditional Specialties Guaranteed and the Geographical Indications as constituent elements of the Industrial Property and that, moreover, Article 4, numeral 4.2 of said Legislative Decree No. 1075, modified by Legislative Decree No. 1397, established that the Head Office of Distinctive Signs of the National Institute for the Defense of Competition and the Protection of Intellectual Property –INDECOPI- is the competent instance in matters related to Traditional Specialties Guaranteed and Geographical Indications, so that in attribution of these functions said entity proposed the Executive the approval of the cited regulations, which regulate the recognition and registration of these new Intellectual Property elements, regulations which were approved by the abovementioned rule.

First, it is confirmed that the Peruvian State is the owner of the Peruvian Traditional Specialties Guaranteed and of the Geographical indications and it is further established that the competent entity for their recognition and registration and/or declaration of protection is the Head Office of Distinctive Signs of the National Institute for the Defense of Competition and the Protection of Intellectual Property –INDECOPI- or the entity that acts for it.

Traditional Specialties Guaranteed

It can be registered as Traditional Specialties Guaranteed the names of food preparations comprising ready meals, beer, chocolate and derivative products, pastries, bakery products and cakes, beverages based on plant extracts, alcoholic beverages and/or cocktails, cheese and dairy products, inter alia. The criteria to be considered for their recognition are that the specific food preparation: a) Is the result of a method of elaboration, production, transformation or composition corresponding to the traditional practice applicable to said preparation; or b) Is prepared using raw materials or ingredients that are traditionally used.

The rule establishes that for the allowance to registration of the name of a Traditional Specialty Guaranteed (TSG), it must: a) Have been traditionally used to refer to the specific food preparation; or b) Identify the traditional or specific character of the food preparation.

The Traditional Specialty Guaranteed (TSG) can be registered ex-officio or at the request of the parties that are directly engaged in the elaboration, production or transformation of the food preparations which names are to be registered. The registration processing is similar to that of a trademark registration. An application for registration must be filed complying with the requirements established by the rule and also a set of conditions must be attached thereto detailing the name which registration is sought; the elements which establish the traditional character of the food preparation; a description of the food preparation including its main physical, chemical, microbiological or organoleptic characteristics or other corresponding characteristics that confer the preparation its specific character; and a description of the elaboration method used, including, as the case may be, the nature and characteristics of the raw materials or ingredients used.

Upon the formal examination, the application is published in the Industrial Property Gazette, so that supported oppositions can be filed within the term of ten working days. If oppositions are filed, they are notified to the applicant which has the same time period to answer them, upon which the case file is ready for the issuance of a decision. Provisions regarding processing aspects of trademark registration are applicable mutatis mutandis to  this processing. The  causes for the denial of the registration of a Traditional Specialty Guaranteed (TSG) are the following: a) Not being according to the definition contained in the rule (Name that identifies a food preparation for human consumption, which has specific characteristics that clearly distinguish it from other food preparations belonging to the same category, as it has been elaborated from traditional raw materials or ingredients, or which is the result of a traditional composition, elaboration, production or transformation); b) Being contrary to the public order; c) Being susceptible of affecting a protected or previously registered intellectual property right; or, d) Being or affecting the indigenous people’s collective knowledge related to biological resources, protected under Law No. 27811, Law which establishes the regime of protection of indigenous people’s collective knowledge related to biological resources.

The registration of a Traditional Specialty Guaranteed (TSG) has an unlimited duration while the conditions that caused its granting continue to exist, nevertheless, the competent Authority can cancel the registration if said conditions are not maintained. It must be noticed that the registration of a Traditional Specialty Guaranteed (TSG) can be modified if any of the elements referred in the set of claims changes.  The modification is subject to the processing established in the Regulations for the registration of Traditional Specialties Guaranteed, as it corresponds.

Finally, the rule establishes that only in the case of food preparations commercialized as Traditional Specialties Guaranteed (TSG) according to the set of conditions applicable to each case, the labelling can include, together with the name of the Traditional Specialty Guaranteed, the wording «Traditional Specialty Guaranteed » or the corresponding abbreviation «TSG», as well as the symbol or sign that the Head Office establishes for advertising the Traditional Specialties Guaranteed.  The registration of a name as Traditional Specialty Guaranteed does not prevent any person from using said name to refer to the food preparation it identifies. The undue use of a Traditional Specialty Guaranteed can be punished with a fine through an infringement action like the action applicable to trademarks, without prejudice to the corresponding criminal penalties or civil actions.

Geographical Indications

Regarding the Declaration on Protection of Geographical Indications, the rule establishes that shall not be declared as such those that: a) Do not meet the definition contained in the rule (Any geographical indication consisting in the name of a geographical zone or containing said name, or other indication known for making reference to that geographical zone, which identifies a product as originally coming from said zone, when determined quality, reputation or other characteristic of the product are essentially attributable to the geographical origin of said product); b) Are common or generic indications to distinguish the concerned product, that is, indications considered as such by both experts in the field and the general public; c) Are contrary to good manners or the public order; d) May induce public to error with respect to the geographical origin, nature, manufacturing means, or quality, reputation, or other characteristic of the corresponding products; e) Are susceptible of creating confusion with a mark applied for registration in good faith, or previously registered in good faith; or, f) Constitute a reproduction, imitation, translation, transliteration or transcription, total or partial, of a notoriously known trademark which owner is a third party, whichever the products or services to which the mark is applied, when their use could cause risk of confusion or association with the third party or with its products or services; unfair exploitation of the prestige of the trademark; or dilution of its distinctive force or of its commercial or advertising value.

The declaration on protection of geographical indications can be made ex-officio or at the request of those that demonstrate to have legitimate interest, understanding as such, the individuals or legal entities that are directly engaged in the extraction, production or elaboration of the product or products intended to be protected with the geographical indication, as well as the associations of producers. The state, department, province or municipal authorities are also considered interested parties when dealing with geographical indications of their respective districts.

The registration processing of a Geographical Indication is likewise similar to that of a trademark registration. An application for registration must be filed complying with the requirements established by the rule and specifying the name of the Geographical Indication which registration is sought; the geographical zone of production, extraction or elaboration of the product that is designated with the Geographical Indication; the product identified by the Geographical Indication; and a descriptive specification of the product identified by the Geographical Indication, which must include at least the following elements and information: a) Description of the product, including, as the case may be, the raw materials used in its production, as well as its main physical, chemical, microbiological, organoleptic characteristics or other corresponding characteristics; b) Description of the method for obtaining, preparing or producing the product and, as the case may be, of the local, traditional or ancient methods used for obtaining them, as well as information on the packing or fitting-out of the product as if it were part of the characteristics thereof; c) Delimitation of the geographical zone of production which evidences the association between the characteristics of the product and the geographical zone of origin of the product; and d) The evidence certifying the foregoing; e) The way of verifying and controlling the continuous fulfillment of the characteristics referred to in the previous subparagraphs and, as the case may be, the identification data of the Controlling Board or entity responsible for this verification and control, and its specific functions; and f) Any specific labelling rule applicable to the product designated by the geographical indication, when it corresponds.

The protection of a Geographical Indication is declared by resolution and has indefinite duration while the conditions that motivated its granting continue to exist. The competent authority can cancel the protection if said conditions are not maintained. However, the interested parties can request again such protection when they consider that the conditions for protection have been restored, without affecting third parties’ rights. Likewise, the declaration on protection of a Geographical Indication can be modified if any of the elements or characteristics set forth in the declaration of protection changes. The modification is subject to the processing established for the Declaration on protection of Geographical Indications, as appropriate, bearing in mind that the Geographical Indications are not considered common or generic terms to distinguish the product they designate, while said protection survives in the country of origin.

To request the authorization of use of a Geographical Indication, producers must be associated with the respective Controlling Board. Controlling Boards, which operation authorization shall also be granted by the competent authority, are entities responsible for formulating proposals of modification of the Regulations on Geographical Indications, as well as orientating, watching and controlling the production and elaboration of the products protected by the Geographical Indication, verifying the fulfillment of the respective Regulations on Geographical Indications, in order to guarantee the origin and quality of such products for their commercialization in the national and international markets, being their duty to safeguard the prestige of the Geographical Indication in the national market and abroad, in coordination with the rest of public and private sectors, as appropriate, and to act with legal capacity in the representation and defense of the general interests of the Geographical Indication and to carry out the necessary actions to preserve the prestige and good use of the geographical indication they administer, guaranteeing the origin and quality of the products distinguished by the Geographical Indication, establishing to that end a system of quality comprising the analytic (physical, chemical, bacteriological, inter alia) and organoleptic examinations, where appropriate.

Controlling Boards are formed by the individuals or legal entities directly engaged in the extraction, production or elaboration of the product or products protected by the Geographical Indication. Likewise, members of the Controlling Board can be the public and private entities having direct relation with the products which indication has been protected. The representatives of the private sector shall be the majority in the composition of the referred association. They are constituted under the form of Civil Associations governed by the Civil Code.

The authorization of use of a Geographical Indication must be requested before its Controlling Board by the persons which: a) are directly engaged in the extraction, production or elaboration of the products distinguished by the Geographical Indication; b) carry out said activity within the territory determined in the declaration of protection; and c) comply with the requirement stated in the regulations of each Geographical Indication.

The request for obtaining the authorization of use must be addressed to the respective Controlling Board or to the Head Office, as the case may be, and it must contain information of the Geographical Indication subject matter of the authorization of use; the Certification of the place or places of exploitation, production or elaboration of the product, which is evidenced by the inspection visit formal document issued by an authorized organism, according the regulations on the respective Geographical Indication; the Certification of the characteristics of the product intended to be identified by the Geographical Indication, including its components, production or elaboration methods, and bond factors with the protected geographical area; which is evidenced by the inspection visit formal document and the certification issued by an authorized organism, in accordance with the Regulations on the respective Geographical Indication.

The authorization of use of a Geographical Indication has a duration of ten years counted as of the date of its granting, being possible its renewal for similar periods of time, in accordance with the Regulations of each Geographical Indication. The renewal application for authorization of use must comply with all the requirements established to obtain the referred authorization of use, as appropriate, and the renewal processing of the authorization of use is governed, as convenient, by the rules established for the cases of trademarks. Likewise, the authorization of use of a Geographical Indication terminates if the renewal thereof is not requested within the established term.

The protection of Geographical Indications begins with the declaration that for such purpose issues the competent authority. Only the producers, manufacturers or artisans authorized to use a registered Geographical Indication can use together with it the expression “Geographical Indication” or “GI”, as well as the symbol or sign established by the authority to advertise the Geographical Indications. Infringements arising from the undue use of a Geographical Indication are punished, as appropriate, through the rules established for the cases of trademark law infringements.