Article 135, paragraph e) of Decision 486, Industrial Property Common Regime, establishes that may not be registered as trademarks those marks which consist exclusively of a sign or statement that may serve in commerce to describe the quality, quantity, purpose, value, geographic origin, time of production or other data, characteristics or information concerning the goods or services for which the sign or indication is to be used, including laudatory expressions for those goods or services.
The marks to which Article 135, paragraph e) of Decision 486 refers are the so-called descriptive marks.
The descriptive denomination informs directly of the characteristics of the good or service. (FERNÁNDEZ-NOVOA, Carlos. Tratado sobre Derecho de Marcas. Madrid: Marcial Pons, 2001. Pag.132)
The ground for the prohibition of registration of descriptive marks as trademark is double. On the one hand, it finds support in the lack of distinctive character of the descriptive marks because far from indicating the business origin of the products or services, the descriptive marks provide the public with information of the property and characteristics of the pertinent goods or services. On the other hand, it finds support in the need of keeping freely available the descriptive marks so that they can be used by all entrepreneurs that operate in the corresponding market sector. (Ibid, page 131)
Now, in the cases in which it is discussed if a mark is descriptive for directly informing about the characteristics of the good or service it intends to cover, it must be taken into account that a mark can be considered descriptive only if it informs directly about the essential characteristic of the good or service to be covered.
The aforementioned has been interpreted in that way by scholarly writings and caselaw of the Andean Court of Justice of the Andean Community.
Scholarly writings have indeed stated the following:
“In order to be “descriptive” in a trademark sense so as to prevent its registration, a trademark must designate a primary and essential quality of the product it intends to distinguish. By pointing it out its essence and not only any peripheral element, it is the product itself which is indirectly designated, and this deprives the trademark of any exclusivity right.” (BENTATA, Víctor. Reconstrucción del Derecho Marcario. Caracas: Jurídica Venezolana, 1994. Page 166)
Likewise, the caselaw of the Andean Court of Justice of the Andean Community has stated that descriptive marks are those which designate the essential or fundamental quality of a good or service. (Judicial Interpretation of April 17, 1998 issued in connection with Proceeding Nº 10-IP-96. At http://comunidadandina.org.)
We believe that this interpretation has not been considered by the Peruvian Administrative Authority in the following decisions:
- Decision No. 8048-2011/DSD-INDECOPI of May 26, 2011 and Decision No. 2465-2012/TPI-INDECOPI of November 29, 2012, which denied the registration of trademark SMART LED LIGHTING, in classes 7 and 11.
- Decision No. 019049-2012/DSD-INDECOPI of December 3, 2012, which denied the registration of trademark BUILDING BETTER INSIGHTS, in class 36.
- Decision No. 002826-2013/DSD-INDECOPI of February 26, 2013 and Decision N° 3931-2013/TPI-INDECOPI of November 22, 2013, which denied the registration of trademark MINERAL THERAPY, in class 3.
- Decision No. 006728-2013/DSD-INDECOPI of May 7, 2013, which denied the registration of trademark NEUTRO BALANCE, in class 3.
- Decision N° 3553-2013/DSD-INDECOPI of March 4, 2014, which denied the registration of trademark VIRTUAL CAR, in class 36.