Notoriety in grade of renown of the denomination of origin pisco

Without any doubt, the denomination of origin PISCO is identified by the generality or, at least, by the majority of the population as the national beverage par excellence, which is obtained by distillation of fresh juice extracted from pisqueras grapes recently fermented, without additives, sugar, water or other elements. Moreover, it is important to mention that in our county, PISCO is synonym of “peruanidad” (Peruvian identity feeling), the Peruvian origin of PISCO being incontrovertible.

Legally, PISCO constitutes a Denomination of Origin, since it is a geographical indication which identifies a product (liquor distilled from grapes) which quality and characteristics essentially result from geographic and human factors of the zone in which it is produced.

The Andean Legislation (Decision 486) grants a special protection to Denominations of Origin, which safeguards the interests not only of consumers but also of producers, who have developed and maintained with effort, over the years, the particular characteristics of the products identified by the Denominations of Origin.

Moreover, Peru is member of the Lisbon Agreement for the Protection of Denominations of Origin and their International Registration, which is in force in Peru since May 16, 2005. The Lisbon Agreement establishes an international system of Denominations of Origin, by virtue of which the member countries undertake to protect, in their territories, the denominations of origin of the products of the other member countries, which have been recognized and protected as such in their respective countries of origin and are registered in the International Office of the WIPO.

It is worth mentioning that our legislation provides the Denominations of Origin of wines and spirits (as in the case of PISCO which identifies a spirit beverage) a reinforced or extended protection, greater than the protection granted to Denominations of Origin of other products.

To this date, there are 10 Peruvian Denominations of Origin, namely (in chronological order): PISCO, MAIZ BLANCO GIGANTE CUSCO, CHULUCANAS, PALLAR DE ICA, CAFÉ DE VILLARICA, LOCHE DE LAMBAYEQUE, CAFÉ MACHU PICCHU-HUADQUILLA, MACA JUNIN-PASCO, ACEITUNA DE TACNA and CACAO AMAZONAS PERU.

PISCO has been the first Peruvian geographic indication declared as Denomination of Origin in our country, by Directorial Resolution No. 072087 DIPI of December 12, 1990, issued by the Industrial Property Head Office of the Institute of Technological Industrial Investigation and of Technical Rules (ITINTEC), replaced by INDECOPI (Peruvian Trademark Office) years later.

Said Directorial Resolution states that PISCO is a Denomination of Origin for products obtained from the distillation of juices resulting from the exclusive fermentation of ripen grapes, according to the provisions of the Mandatory National Technical Rule (at present replaced by the Regulations of the Denomination of Origin Pisco), produced on the costs of the departments of Lima, Ica, Arequipa, Moquegua and the valleys of Locumba, Sama and Caplina of the department of Tacna.

Later, in 1991, Supreme Decree No. 001-91-ICTI/IND of January 1991, officially recognized PISCO as Peruvian Denomination of Origin for products obtained by distillation of wines derived from the fermentation of fresh grapes, in geographic zones of the southern coast, mentioned above.

Current Regulations of Denomination of Origin PISCO, approved by Resolution No. 2378-2011/DSD-INDECOPI of February 14, 2011, issued by the Peruvian Trademark Office, in Article 3 defines the product identified by the Denomination of Origin PISCO as the product “(…) obtained exclusively by distillation of fresh juice of “Pisqueras Grapes” recently fermented, using methods that maintain the traditional principles of quality; and produced on the coast of the departments of Lima, Ica, Arequipa, Moquegua and the Valleys of Locumba, Sama and Caplina of the department of Tacna.”

According to the Regulations, “Pisqueras Grapes” are 8, namely: Quebranta, Negra Criolla, Mollar, Italia, Moscatel, Albilla, Torontel and Uvina (the latter only for cultivation and production in the districts of Lunahuaná, Pacarán and Zúñiga, of the province of Cañete, department of Lima).

Now then, in the case of the denomination PISCO converge two categories of great significance in the industrial property field, since, on the one hand, it is a Denomination of Origin and, on the other hand, it enjoys the Notoriously Known status. It is meant by notoriously known sign, the one that is widely spread and known by the members of the pertinent sector of the products identified by the sign under discussion.

Notoriously known distinctive signs deserve a special protection in our industrial property system, since said protection breaks the principles of territoriality and registration, and can even transcend the principle of specialty.

Although our Andean legislation only regulates the category of notoriously known distinctive sign, the Court of Justice of the Andean Community has recognized the existence of the category of “renowned mark”. Thus, when construing the articles of Decision 486 referred to notoriously known signs, the Court of Justice of the Andean Community has stated that, unlike the notorious mark, the renowned mark is practically known by the public at large, that is, it is known beyond the pertinent sector (Resolution of Prejudicial Interpretation of July 7, 2017, issued by the Court of Justice of the Andean Community in Proceedings 50-IP-2017). It is worth mentioning that the reference to “renowned” would be applicable not only to marks but also to any renowned distinctive sign, such as the Denominations of Origin.

In light of the referred case law of the Court of Justice of the Andean Community, the Peruvian Trademark Office has declared the notorious status in the grade of renown of the Denomination of Origen PISCO. Said declaration is contained in Resolution No. 13880-2017/DSD-INDECOPI of July 26, 2017, issued in connection with File No. 693342-2017, corresponding to the application for registration of trademark The Pisco Lab, filed by Irene Patricia Arenas Huaroto, from Peru, to distinguish products in class 33 and services in class 41.

In said case, upon analyzing the means of proof provided by own initiative of the trademark authority, the Peruvian Trademark Office establishes the following (Resolution No. 13880-2017/DSD-INDECOPI of July 26, 2017, issued by the Peruvian Trademark Office, in connection with File No. 693342-2017):

“From the overall analysis of the means of proof, it is verified that the denomination of origin PISCO, has been widely advertised and extended in Peru in relation to liquor of fresh juice of “pisqueras” grapes recently fermented, in class 33 of the International Classification.

In effect, the analyzed sign corresponds to a denomination of origin of Peru which, as verified from the historical information and regulations, owes its recognition to the reputation gained in time.

(…)

The high degree of recognition of the denomination of origin PISCO has been demonstrated not only by the constant advertising made but also by the broad diffusion in local and international media which evidences the broad advertising and knowledge among consumers of the beverage that the Peruvian State itself has classified as national beverage.

By virtue of the abovementioned, given the scope of the denomination of origin PISCO, it has been able to position within a wide sector of consumers, not only of Pisco and alcoholic beverages, but it extends to Peruvian consumers at large, which means that the protection of said sign goes beyond the principles of specialty, territoriality, registration and actual and effective use.  Therefore, it is a renowned denomination of origin, which protection, according to the criteria developed by the Court of Justice of the Andean Community, extends to the four member countries of the Andean Community in relation to all type of goods and services.

The registration of trademark The Pisco Lab, applied for by Irene Patricia Arenas Huarato, was denied by the Peruvian Trademark Office on the basis of the following registration prohibitions:

• Article 135, paragraph k) of Decision 486, which prohibits the registration of trademarks containing a denomination of origin protected for wines and spirits. Said article states the following:

“Article 135 . Signs may not be registered as trademarks when they:

(…)

k) contain a protected denomination of origin for wines and spirits;

(…)”

• Article 136, paragraph h) of Decision 486, which prohibits the registration of trademarks the use of which in commerce may affect a notoriously known distinctive sign.  Said article states the following:

“Article 136. Those signs the use of which in commerce may constitute an impediment to the rights of third parties may likewise not be registered as trademarks, in particular when:

(…)

h) consist of a total or partial reproduction, imitation, translation, transliteration, or transcription of a notoriously known distinctive sign belonging to a third party without regard to the type of product or service to which it shall be applied, the use of which would lead to a likelihood of confusión or mistaken association with that party or with the products or services thereof; an unfair exploitation of the prestige of the sign; or the dilution of its distinctive force or of its use for commercial or advertising purposes.”

Therefore, PISCO constitutes the first Peruvian Denomination of Origin, declared by Peruvian Trademark Office as Notoriously Known, in the grade of renown. Said declaration constitutes an important step to reinforce the protection of the Denomination of Origin PISCO in our country and in the Andean Community.