Trademark Notoriety
Nike
The Intellectual Property Chamber of the INDECOPI Tribunal, through Resolution No. 0330-2024/TPI-INDECOPI, issued a binding precedent establishing that the recognition of a trademark’s notoriety is valid for a period of five years.
After this period, the trademark holder claiming notoriety must bear the burden of proving such a condition, as stipulated in Article 228 of Decision 486.
Trademarks and Absolute Prohibitions
Capibara
A Chinese entrepreneur registered the trademark CAPIBARA & logo to distinguish stationery and office supplies, among other items, under Class 16.
The registration has raised concerns among other entrepreneurs who also use the figure of the animal to distinguish a variety of products, including those in Class 16.
To date, additional applications have been filed under Class 28 (toys) and Class 16, marked by the figure and the term CAPIBARA. Likewise, several nullity actions have been filed against the registered trademark in Class 16.
The decision from INDECOPI’s Trademark Office regarding the degree of distinctiveness of the sign is pending, which will affect the potential coexistence of other registrations containing elements considered common for these classes.
Hablando Huevadas
NDECOPI rejected the application for the HABLANDO HUEVADAS & logo trademark, filed by Ricardo Mendoza and Jorge Luna, two well-known content creators in the entertainment industry. The Authority argued that the trademark violates public morals, particularly because it also targets children and young people, falling under the prohibition established in Article 135, subsection (p) of Decision 486.
The applicants have appealed the decision, and the ruling from the Trademark Commission is pending. It is worth recalling the case of the EL PEZWEON & logo trademark, which reached the Intellectual Property Chamber and ultimately reversed the first-instance decision, stating that the trademark does not violate public morals, which is different from bad taste, especially when the term is colloquial among young people (the applicant limited the products to that demographic).
Postres Cuchareables by Sienna
Many entrepreneurs expressed concern over INDECOPI’s approval of the trademark POSTRES CUCHAREABLES BY SIENNA & logo to distinguish restaurant services (food); temporary lodging under Class 43. The concern was centered on the exclusive rights over the term “CUCHAREABLE.” However, the Authority clarified that it did not grant exclusive rights over the term “CUCHAREABLE” as it is descriptive.
Therefore, the trademark is protected only for its distinctive elements, such as “BY SIENNA,” and the overall impression of the sign.
Advertising and Unfair Competition
Win
The Specialized Chamber for Competition Defense of INDECOPI upheld the first-instance decision, determining that the advertising under review did not constitute acts of denigration or improper comparison. The campaign by Wi-Net Telecom S.A.C. did not directly or indirectly reference Telefónica del Perú S.A.A. or América Móvil Perú S.A.C.
This case invites reflection on the importance of humor in advertising and the regulation of comparative advertising in Peru, which, in this case, did not apply due to the lack of direct or indirect reference to the complainants.
INDECOPI’s Advertising Guide for Influencers
INDECOPI published a new version of its Advertising Guide for Influencers. This document serves as guidance for influencers and advertisers to understand the rules they must follow when advertising.
For example, influencers and advertisers should consider the definition of “influencer,” which is not limited solely to the number of followers, as well as the most common forms of advertising used by them, including unboxings, product exchanges, giveaways, and photo or video posts. It is also crucial to understand when and how to disclose the material connection between the brand or advertiser and the influencer. Additionally, they should be aware of potential administrative sanctions, which can reach up to 700 UIT for unfair competition violations, up to 150 UIT for industrial property violations, and up to 180 UIT for copyright infringements.
Sectoral Regulation
Law No. 32159 – Law for the Control of Tobacco, Nicotine, and Substitute Products Consumption to Protect Life and Health
The recent law prohibits smoking or vaping in health and education facilities, public institutions, workplaces, enclosed public spaces, and public transportation. These areas are deemed 100% smoke-free. Enclosed public spaces are defined as any area covered by a roof and at least two walls, regardless of the material or permanence.
The law establishes a total ban on the advertising, promotion, and sponsorship of tobacco products and their substitutes, including those with cross-border reach. Strict restrictions are also imposed on nicotine product advertising, banning its dissemination in traditional media and areas near educational and health centers.
Additionally, the law regulates the packaging and labeling of tobacco and nicotine products. For example, the products must display the phrase “SALE TO MINORS UNDER 18 IS PROHIBITED.” For tobacco products, the use of terms such as “light,” “ultralight,” “mild,” “super mild,” and synonyms is prohibited, among other restrictions established by the law.
For more information, contact Alejandro Castro (alejandrocastro@unionandina.com)