Trademark modification as defense strategy

Published byGonzalo Barreda

1.      Introduction

As broadly known, the application for registration of a trademark will be always denied if said registration may cause risk of confusion with a previously registered or applied for mark. To cause risk of confusion, the applied-for mark must i) be identical o similar to the previously registered or applied-for mark and ii) distinguish identical or related products or services.

Risk of confusion with a prior mark is the greatest cause of rejections and the main foundation of oppositions.

In this situation, the filing of an opposition or the ex officio denial based on the supposed risk of confusion with a previously applied for or registered mark, the strategies usually recommended are questioning the existence of risk of confusion or trying to eliminate the preexisting registration, whether through a cancellation action for non-use or the filing of a nullity action.

Nevertheless, there are some cases in which none of the aforementioned options is possible. In some occasions, the marks are clearly similar (or at least they are similar under INDECOPI’s criteria) and the previous trademark is being used, so it cannot be canceled, nor exist grounds for a nullity action.

What is recommended in said circumstances? Normally, the final measure in these cases is a coexistence agreement, which, despite working in some occasions, it is not always useful since it requires the acceptance of the other party, which will hardly ever occur in those cases in which the other party is precisely who has opposed the registration.  Moreover, even if the owners of the trademarks in dispute come to an agreement, the coexistence could be rejected by the Authority, in order to protect the interest of consumers.

When this happens, when there is no defense alternative and even coexistence agreements are rejected, the legal recommendations are usually or insist on the same in the appeal, or otherwise presenting a new application for registration of the slightly different trademark, modified to eliminate the risk of confusion. Regrettably, none of this alternatives is ideal since sometimes the possibilities of success in an appeal are reduced and presenting a new application for registration implies losing the priority date of the application already claimed, running the risk that the new application for registration be rejected due to a trademark applied for registration after the original application, but before the new application for registration.

Then, is there any further alternative seldom recommended? Yes, the modification of the trademark during the same registration processing. Although the limitation of products or services distinguished by the applied-for mark for eliminating any connection of products or services with previous trademarks is a usual practice, the modification of the trademark itself is rarely a recommended strategy, despite being absolutely possible.


2.     Applicable regulations

Peru is a member country of the Andean Community and, as such, its Trademark Law is Decision 486, Common Regime on Industrial Property. Article 143 of this Decision establishes the following:

"Applicants for registration of a trademark may ask to modify their applications at any time during their processing or to correct any material mistakes.

The competent national office may, at any stage of the processing, suggest that applicants make changes in their applications. Said proposal of amendment shall be processed in accordance with the provisions of article 144.

In no case may the application be amended by making important changes in the trademark or adding new products or services to those initially specified.

Fees may be prescribed for the amendment request, if domestic legislation so provides."


The rule is clear, the modification of a trademark, not only in the identification of products or services, but in the mark itself, is perfectly possible, provided it does not imply a change in substantive aspects of the mark.

Although said criterion, the affectation of substantive aspects of the mark, can be subjective, the caselaw helps us to comprise what the National Authority understands by substantive aspects. Upon analyzing said caselaw, we could get to know, with some degree of certainty, which modifications will be acceptable and which will not.


3.      Casuistry

Although it could result strange, the truth is that INDECOPI, in recent proceedings, has demonstrated that the elimination of distinctive elements of the applied-for marks can be considered a non-substantive change, which implies that, even if there is an element of the trademark that, for being a distinctive element, conflicts with a previous trademark, it results absolutely valid to simple eliminate the distinctive element and continue with the registration proceeding, thus eliminating the risk of confusion and obtaining the registration without having to file an appeal, a cancellation action, a new application for registration or to negotiate a coexistence agreement.

By way of example, we would like to mention two recent proceedings, of year 2021:

1.         Case File No. 903681-2021

In this case, the registration of trademark CLUB KIA PICANTO AQP and design was originally requested. Clearly, the main element of the trademark was formed by the denomination KIA PICANTO, since the denomination CLUB was unquestionably common and the denomination AQP made reference to AREQUIPA, a Peruvian department, from which the applicant came, so it was clearly a descriptive element.

Nevertheless, as it was obvious that said application for registration would be opposed by KIA MOTORS CORPORATION, owner of trademarks KIA y PICANTO, the applicant modified its registration, eliminating the denominations KIA and PICANTO, leaving only the design and denominations CLUB and AQP.

One could believe that, being the denominations KIA and PICANTO the main elements of the trademark, removing them would not be possible, nevertheless, the Authority accepted the modification and, consequently, the trademark was registered without any problem.


2.      Case File No. 894343-2021

In this case registration was requested for a beer trademark containing among its denominative elements, the term PILSEN. The reason for which said trademark included said denomination was because in many countries of the world, said denomination relates to a type of beer, that is, it is an informative element; thus, said word was not deemed a distinctive element for the applicant’s trademark.

However, in Peru PILSEN is a recognized trademark of beers and said denomination is distinctive. For that reason, the registration of the trademark containing the denomination PILSEN was denied by the first instance’s Authority.

Instead of filing an appeal and trying to convince the Authority that PILSEN was a type of beer and that, therefore, it was not a distinctive element, or instead of starting from zero and applying for the registration of a new trademark, the applicant simply decided to submit a motion for reconsideration, in which the trademark was modified to delete the word PILSEN, and due to this strategy, registration was granted for the trademark in less than one month, that is, the rejection of the applicant’s trademark was almost immediately overcome.


4.      Conclusion y recommendations

In conclusion, although for someone it may be an odd decision, the Peruvian Trademark Office believes that the modification of distinctive elements in a mark is not a substantive modification and, therefore, it is perfectly accepted. Accordingly, attorneys shall always take into account this possibility when designing the defense strategy for their clients since, in some cases, small changes in a mark, even removing words or images (changes with which the client could agree as they do not affect the main elements of its trademark), could be the fastest and most efficient way to obtain a trademark registration.