New Peruvian regulation concerning coexistence agreements between trademarks
A resolution issued in December 2014 applies criteria to the evaluation of whether or not a Trademark Coexistence Agreement can be accepted.
INDECOPI Resolution Nº 4665-2014/TPI-INDECOPI developed after the local PTO denied the trademark application “CASCADE CHOPARD” (through resolution N. 3619-2014/DSD-INDECOPI) and the applicant filed an appeal and informed about a Coexistence agreement signed with the owners of “CASCADE.”
In this case, the main conflict was concerning a registered trademark (“CASCADE CHOPARD” in int. class 3) and a trademark application (“CASCADE” in int. class 3). Taking into account that both trademarks are extremely similar and identify products included in the same class; the risk of confusion should be analyzed by the local authority.
In said Resolution, INDECOPI´s Intellectual Property Chamber mentions article 56 of Legislative Decree No. 1075, which provides that the parties can agree on the coexistence of identical or similar signs, if such coexistence does not lead to confusion among consumers. However, until Resolution N° 4665-2014, the local PTO had not issued any guidelines establishing the conditions to be included in a Trademark Coexistence Agreement for it to be accepted by the Trademark Authority.
The Chamber established the Trademark Coexistence Agreement, with some minimum conditions, including the following:
a) Information on the trademarks covered by the agreement.
b) Delimitation of the territory or territories where the agreement will be applicable.
c) Consequences if the agreement is not fulfilled.
d) Conflict resolution mechanisms if there is any conflict between the parties
INDECOPI´s Intellectual Property Chamber emphasized that if a certain agreement does not fulfill the minimum conditions then it will not be accepted by the local Authority.
The agreements that do meet the conditions established in Resolution Nº 4665-2014/TPI-INDECOPI will not be automatically approved, because it should be evaluated if the Trademark Coexistence Agreement is contrary to the general interest of consumers or not.
Regarding the conflict between the trademarks “CASCADE CHOPARD” and “CASCADE”, INDECOPI´s Intellectual Property Chamber denied the registry for the trademark application “CASCADE” and also did not accept the coexistence agreement filed by the applicant.