With the entry into force of Legislative Decree No. 1075 in February 2009, our industrial property legislation establishes a maximum legal term applicable to the prosecution of administrative proceedings on this matter.
Thus, Article 24, paragraph one, of said Legislative Decree establishes that “the maximum period allowed for the prosecution of administrative proceedings regulated by this Legislative Decree shall be one hundred and eighty (180) working days; without prejudice to what is established in special rules or to the terms arising from the very nature of the respective proceedings.”
Although the rule establishes that the maximum term is 180 working days, applicable to the prosecution of proceedings regarding distinctive signs, it does not specify since when said term must be counted. This can give rise to a series of different positions and interpretations, particularly, in the case of contentious proceedings or appeals.
In non-contentious applications for registration of trademarks (and other distinctive marks), where no oppositions are filed, it is clear that the term must be counted as from the beginning of the registration prosecution, that is, as from the filing date of the application with the Trademark Office (INDECOPI). In said cases, the resolution granting or denying the registration must be issued within the maximum period of 180 working days counted as from the filing of the application, unless a resolution suspending the proceeding is issued.
Nevertheless, upon the issuance and challenge of a resolution, the applicability of said maximum term is not so clear in all the cases. Thus, for example, what happens when the first instance resolution is challenged and, in appeal, is declared null by the hierarchical superior? The first instance has again 180 working days to issue a new resolution?
Said situation has been recently clarified by the Administrative Court of INDECOPI by means of Resolution No. 1266-2021/TPI-INDECOPI of October 6, 2021, which constitutes Precedent of Mandatory Compliance regarding the scope of Article 24 of Legislative Decree 1075, cited above.
Said resolution was issued in connection with File Case No. 833835, regarding the complaint for prosecution defects filed by A & G Industrias Peruanas S.A. in the nullity action filed by KLC Industrias E.I.R.L. against the registration of trademark CONEJO and logotype, registered in favor of the first mentioned above, under Certificate No. 284303, in class 3 of the International Classification.
In said file case, the Trademark Office declared well-grounded the nullity action. Said decision was challenged by the trademark owner and, in appeal, the Administrative Court declared null the resolution of the Trademark Office and, therefore, remanded the case to the first instance for the issuance of a new decision.
Given the delay in the issuance of the new resolution by the Trademark Office, A & G Industrias Peruanas S.A.C. filed a complaint with the appellate instance. In this regard, it is worth remembering that the complaint is a procedural remedy by which the petitioners which have suffered damages for prosecution defects (such as non-fulfillment of the legally established terms) can resort to the hierarchical superior of the lower instance authority or officer concerned, so that the first issues a decision based on the reasons for the complaint and proceeds to correct the defects (Directive No. 001-2009/TRI-INDECOPI, modified by Directive No. 002-2014/TRI-INDECOPI).
In its defense, the Trademark Office argued that, since the first resolution issued by the Office was declared null by the appellate instance, the maximum legal term for the issuance of a new resolution should be counted, not from the beginning of the nullity action, but as from the date on which the Trademark Office received from the Court the case file for the issuance of the new resolution. Under said interpretation, the term of 180 working days would end on January 4, 2022.
Nevertheless, unlike the first instance, the Administrative Court interprets that the term of 180 working days, established in Article 24 of Legislative Decree 1075, is only applicable for the issuance of a first decision and not in those cases in which a new resolution must be issued due to the fact that the first resolution has been declared null.
In this respect, the Court expressly establishes that when only the issuance of a new resolution is required with information and documentation already appearing in the case file –not existing prosecution defects that require correction-, the first instance must issue a new resolution as soon as possible, having as reference the term of 30 working days established in Article 153 of the Consolidated Text of Law 27444 (General Administrative Proceeding Law).
On the basis of said considerations, the Court declared well-grounded the complaint filed by A & G Industrias Peruanas S.A.C., as it considered that there was an excessive delay in the issuance of the resolution, having passed more than five months since the case had been remanded to the first instance for the issuance of a resolution.
Moreover, it establishes the Precedent of Mandatory Compliance in the following terms:
“(…) this Resolution constitutes Precedent of Mandatory Compliance in the sense that the maximum term for the prosecution of administrative proceedings established in Article 24 of Legislative Decree 1075 is not applicable when a decision has been already issued by the First instance and said decision has been declared null, having the First instance to issue a new decision based on the existing proceedings and that, furthermore, no additional proceedings are required in the case, taking into account as reference the maximum term of 30 working days stated in Article 153 concordant with Article 145.1 of the Consolidated Text of Law 27444 (General Administrative Proceeding Law)."
The abovementioned has sense if it is considered that the petitioners have already waited for some or several months (even up to 180 working days) for the issuance of a first resolution which was subsequently declared null.
Given the binding nature of the precedents of mandatory compliance, the first administrative instance must take as reference the maximum term of 30 working days, instead of 180 working days, for the issuance of new resolutions in those cases in which their first resolution was declared null.
Certainly, the criterion adopted by Administrative Court in the Precedent of Mandatory Compliance cited above, is beneficial to the petitioners and is in line with the celerity principle which must rule the administrative proceedings.