Our laws allow the registration of trademarks in class 35 to distinguish services that include the “bringing together for the benefit of others, of a variety of goods (excluding the transport thereof) enabling consumers to conveniently view and purchase those goods”, as set forth in the Nice Classification, 10th Edition.
Certain opinions exist in the sense that, from the aforementioned, it may be possible the registration of trademarks to distinguish the retail sale service. We believe that said opinions are not right since the buying and selling by itself constitutes an economic activity through which a right is acquired for a good, or is the right to render a service in return for money, but by itself, the buying and selling, whether retail or wholesale, is not a service.
The subject is clearly explained by the Nice Classification in the explanatory note thereof which states that the discussed service may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programs.
Consequently, we are not in front of whom exclusively manufactures and sells its own goods; we are in front of whom trades in principle the goods of third parties, being also able, why not, to offer among these goods and almost as an exception, its own goods.
We must emphasize that the service to be distinguished is that which offers traders the bringing together of goods manufactured by others according to criteria that may be usually used by competitors or according to personal or even arbitrary criteria, all this in order to make easy the examination and purchase of said goods by consumers. Thus, this is a service commonly offered by large supermarkets, supermarkets, self-service stores, the so-called “all for: (currency unit)” and the department stores, among other premises.
It is worth mentioning that the Peruvian Trademark Office does not require, for the registration of trademarks intended to distinguish the service at issue, the specification of this service, that is, under what criteria or how the goods are brought together. It will be suffice to cite the text of the explanatory note of the Nice Classification: “the bringing together, for the benefit of others, of a variety of goods, enabling consumers to conveniently view and purchase those goods”, to consider the service to be distinguished, duly defined.
The Peruvian Trademark Office neither requires for granting trademarks destined to distinguish the service at issue, the specification of the goods to be brought together. However, said goods are not prevented from being mentioned, either.
The specification or not of the goods to be brought together in the trademarks applied-for and/or granted to distinguish the service at issue, causes a different treatment with respect to its protection against risk of confusion.
When the goods to be brought together are not specified, the trademark is protected against risk of confusion with respect to the trademarks in said class 35.
When the goods to be brought together are specified, the trademark is protected against risk of confusion as much with respect to the trademarks in class 35, as with respect to the trademarks protecting the goods at issue and that obviously correspond to another class of the Official Nomenclature. As an example, we will mention Decision No. 4077-2013/TPI-Indecopi which denied the registration of a trademark to distinguish “services that include the bringing together, for the benefit of others, of clothing…” as it was mistakable with another trademark registered for “clothing” in class 25.
Bearing in mind the aforementioned, we may suggest who is trying to apply for the registration of a trademark to carry out a background research, as much in the class of the intended goods as in class 35, and vice versa. Likewise, the owner of a trademark must request a report of the applications made for the registration of trademarks which are confusing with its own trademarks, in order to distinguish the same or similar goods and to distinguish the services in class 35 which are associated to said goods, and vice versa.