New criterion adopted by the Trademark Office regarding duplicity of registrations

Published byBarreda Moller

With certain frequency, owners of registered trademarks wish to applied, after some years, for the registration of the same mark in the same class in which it is already registered.

Some of the reasons that encourage trademark owners to act in this way are the following:

1. To extend the list of products protected by the original registration; and/or,

2. To obtain a new registration not vulnerable to cancellation actions due to lack of use until after three years of having been granted.

Nevertheless, we must take into consideration that according to our domestic trademark law, Legislative Decree No. 1075, it is not possible to register a mark which is already registered in favor of the same owner, in the same class, to distinguish products comprised, expressly or implicitly, in the coverage of the original registration.

In this regard, Article 58 of said Legislative Decree establishes that “the holder of a registered sign which distinguishes specific goods or services may obtain a new registration for the same sign, provided that this sign identifies goods or services that are not covered by the original registration. (…)”

The Peruvian trademark Authority construes that, in virtue of the aforementioned rule, the registration of the same mark in the same class for the second time in favor of the same owner is conditional of the fact that the new registration distinguishes products or services not included in the original registration.

Until some months ago, the Trademark Office usually rejected applications for the registration of marks that duplicated already registered trademarks, regardless of whether all or only some of the products of the new application were comprised –implicitly or expressly- in the original registration. In other words, it was irrelevant for the Trademark Office whether or not the new application comprised also other products not included in the original trademark registration, since in all duplicity cases the Trademark Office rejected all the new applications for all the products they intended to distinguish.

Nevertheless, said criterion has been recently changed by the Trademark Office, as it has taken the new stance of rejecting applications on the grounds of duplicity but only for those products of the new application that are comprised (implicitly or expressly) in the original registration. Thus, according to this new criterion, if the new application includes products comprised in the original registration but also includes other products of the same class or other classes, then the new trademark registration will be granted for those other goods.

This new attitude taken by the Trademark Office, which we will call “partial duplicity”, is expressed in Decision No. 8817-2013/DSD-INDECOPI of June 7, 2013 (available at the on-line data base of INDECOPI –National Institute for the Defense of Competition and Protection of Intellectual Property), issued in connection with Case N° 506888-2012. In said decision, the Trademark Office denied the trademark registration but only for certain products, that is, those products covered by the previous registration of the same mark that applicant already owned. Thus, said decision established the following (underlining has been added):

“Therefore, with respect to (…) [products comprised in the previous trademark registration] this application is not admissible, so the Office will perform the registrability examination for the remainder of the applied-for products.”

After the registrabiliy examination of said mark, the Trademark Office concluded that it complied with the registrability requirements and did not fall within the causes for registration prohibition, so trademark registration was granted for those other products not included in the original registration of the same mark.

We believe this change of view of the Trademark Office is important as it is beneficial for owners who wish to extend the protection of their registration to new products, particularly, in those cases where –due to the technical nature or specificity of the products- it could not be clear whether or not there is product duplicity.

Nevertheless, we must emphasize that this stance –which is exclusive of the Trademark Office- is not applied by the Administrative Court, which is the entity in charge of deciding on appeals.