FOREWORD BY EDITOR, ANDREW CHILVERS
Intellectual property and the challenges of globalisation
When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.
The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.
Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.
Do you see any emerging trends or potential upcoming developments in your country’s trademark law?
In September 2018, Legislative Decree No. 1397 was approved, incorporating geographical indications and traditional specialities guaranteed as elements of Industrial Property. Likewise, the Trademark Office of the Competition and Intellectual Property Agency – INDECOPI – was designated as the competent entity.
The incorporation of geographical indications and traditional specialities are aimed at generating value for those products whose differentiation is based on geographical origin and boosting the promotion of Peru’s gastronomic offering, respectively. In this regard, on January 10, 2020 the Trademark Office published a proposal for its regulation.
Some interesting aspects in the published proposal are the following:
• The owner of the geographical indications and traditional specialities guaranteed is the Peruvian State.
• Geographical indications can be registered ex officio or at the request of natural or legal persons who are dedicated to the extraction, production or elaboration of the product or products that are intended to be protected by the Geographical Indication, as well as producer associations. This includes state, departmental, provincial or municipal authorities when it comes to geographical indications of their respective constituencies.
• Traditional specialities guaranteed can be registered ex officio or at the request of those who are directly engaged in the production, processing or transformation of agricultural or food products whose name is to be registered.
• In the case of traditional specialities guaranteed, the registration procedure is fast: it’s five business days and the opposition period for third parties is 10 business days. Likewise, the registration lasts for as long as the conditions that motivated it persist. Furthermore, the terms “Traditional Speciality Guaranteed ” or “ETG” (in Spanish) may be used on the labeling; however, this does not prevent anyone from using this name to refer to the traditional product.
• Regarding geographical indications, a Regulatory Council is established to verify compliance with the conditions of production and elaboration of the products covered by the geographical indication, guarantee origin, among other functions.
In your jurisdiction, what options are available to a trademark holder when applying rights or enforcement rights? What protection is there for unregistered names and/or brands?
In the case of trademarks, you can file an (i) opposition, (ii) infringement action; and, (iii) claim against a domain name. In the first case, against trademarks published in the official gazette that generate a likelihood of confusion. In the second case, against unfair uses in the market, such us counterfeiting, likelihood of confusion and improper exploitation of the reputation of others; and in the third case, against a Generic Top-Level Domain (gTLD) or a Country Code Top-Level Domain (ccTLD). In the latter case, a trademark owner may go to the local Authorized Arbitration Center and initiate a claim procedure, requesting the transfer or cancellation of the domain.
Regarding unregistered names or brands, it is important to note that there are exceptions in the Peruvian trademark system. In particular, the trade name rights are acquired by use and the registration is of declaratory nature. Therefore, a person or legal entity who has a trade name in use can file an opposition or infringement against a trade name or brand; however, because the protection of a trade name is proportional to the territory of its economic activities, other considerations should be taken when exercising these rights.
Likewise, well-known marks are also part of the exceptions and the principles of specialty and registration are broken. In this case, the owner can file an opposition or file a complaint without having a registration granted. However, he must prove that the brand has been implemented in the relevant consumer sector, being necessary to present a series of quantitative and qualitative proofs that allows the trademark authority to have the conviction that said trademark has the notorious category.
Finally, on a residual basis, a natural or legal person who has an unregistered trademark or distinctive sign and considers that a third party is committing acts of unfair competition, in particular, confusion, association or acts of undue exploitation of his reputation through the use of his trademarks, can file a complaint with the Authority for Repression of Unfair Competition.
How is global innovation and digitalization shaping the advice you give your clients and what should they be aware of?
The relevance of innovation and digitization in recent years has allowed us to offer other services related to consulting and implementation of compliance programs. In particular, offering Consumer Law, Copyright Law, Advertising Law and Personal Data Protection services has allowed us to validate that our clients are seeking for comprehensive services which are focused on the digital transformation of their brands and businesses.
At a local level, it is important to highlight the educational work that we must provide as lawyers. Many of our clients do not know their rights or the rights of their consumers, so it is important for us to implement informative and practical workshops in our services so that they can be aware of the different legal tools available and use them efficiently
The current context has forced our clients to take the step towards digitization and that is why we consider of utmost importance the deep understanding of their businesses and the flexibility and customization of our services in order to provide the best legal advice and value in the market.