1. Why register a trademark?
Use of a mark without registration provides no right or title to the user. Title to a mark derives only from registration.
2. Is registration of a mark mandatory?
Registration is not compulsory even if the mark is in use, but it is highly advisable. Trademark rights depend upon ownership of a registration and, as discussed below, the legal benefits of registration may not be available otherwise.
3. What is registrable?
Any symbol that is sufficiently distinctive and that is capable of graphic representation is registrable as a trademark. This includes labels, three-dimensional forms, word marks, distinctive box and bottle designs, names, geographical names, numerals, letters or combinations thereof, flavors and scents.
4. Can a trademark be registered for retail and like services?
It is not possible to register retail and like services. However, an application may be filed for 搕he bringing together for the benefit of others of a variety of goods (excluding the transport therefore) enabling customers to conveniently view and purchase those goods.?/span>
5. How are domain names protected?
Domain names are protected in Peru with registration by NIC-PE. A domain name application is published the same day on which the deposit of the application takes place for opposition purposes (ten calendar days). If no opposition is filed within this term, registration is automatically granted. The publication includes the domain name applied for, the name of the applicant and the date and time of publication. To apply for registration of a domain name, an applicant must submit an authorization letter on the letterhead of the company requesting the domain name, the name of the host that is the primary and secondary domain name server and the Internet address of the primary and secondary domain name server. After the application is filed, there is a term of ten days for the domain name to be granted. This is a first to file priority system.
6. Should a trademark be searched before filing?
It is advisable to search a mark before filing to avoid unnecessary procedural cost. Applications are officially searched by the Trademark Office as to prior marks after publication for opposition purposes, during the step of substantive examination, but this takes several months to complete. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
A natural person may file and prosecute his application by himself. A corporate applicant may file either through its local officers or through a trademark attorney. A foreign application must have Peruvian representation and must designate local address.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant including name, nationality or legal domicile and address, a list of goods/services to be covered, and a legalized power of attorney. If priority is claimed, information about the priority application must be provided.
9. Is local registration the only option, or are there international alternatives?
Local registration is the only option to secure trademark rights.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Yes. A separate application must be filed for each class of goods or services. Multiple class applications are not allowed.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Peruvian application, the filing date of the home application can be claimed as the filing date in Peru. Similarly, if an applicant抯 home country is a member of the World Trade Organization or Andean Pact, it is possible to claim priority for the home filing date if filed in Peru within six months from the priority application. Consult a Peruvian trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
If a mark is not used for a period of three continuous years in any Andean Community country, the registration is vulnerable to cancellation.
13. Is using a variation of the trademark allowable?
Using a variation of the trademark as registered is allowable but under limited conditions. If the difference between the mark as registered and the mark as used is slight and such difference does not alter the distinctive element or characteristic features of the mark as registered, use of a slightly different trademark would not affect the validity of the registration nor will render it unenforceable.
14. Is there any advantage to using a trademark before filing an application?
No. Rights to a mark are acquired only through registration.
15. For an application to be valid, are there any particular requirements that must be met?
The applicant must fulfill the formal requirements of the law. The first applicant is entitled to registration.
16. What information is first published about an application/ registration and when is it published?
Trademark applications are published in an Official Gazette approximately 30 days after the application is filed or after the filing of all required documents (power of attorney/priority document), setting out the serial number, a depiction of the mark, identity of the applicant, goods, services, classes and priorities. This is the only publication that is made.
17. What kind of examination (if any) will a new application undergo?
An application will receive an initial examination on both absolute and relative grounds. The mark is then published for opposition, and if no oppositions are filed, the trademark office proceeds to examine registrability of the mark.
18. What response to official objections is required?
The Authority is entitled to object to an application on the basis that the goods/services claimed do not correspond to the class cited in the application, or may demand clarification on the proper name, address or domicile of the applicant. When priority is claimed, the Authority is entitled to object to an application on the basis that the goods or services do not conform to the list of goods or services of the priority application. An applicant has 60 days to respond to the objection.
19. How long is the registration process?
When there is no objection or opposition, the registration process takes approximately eight months from the date of filing.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application. It also provides right to claim priority in another Andean Community country.
21. What is the legal effect of a registration?
A registrant receives from the Authority recognition for exclusive use of the mark in respect to the goods/services cited in the application. Such exclusive right includes the right to oppose the use or attempt to register a similar or identical mark filed by a third party in respect to identical or related goods/services, whether the goods are manufactured locally, imported to Peru, or manufactured locally for exportation. A registrant also receives from the Authority the right to exclude third parties from using the mark (or a substantially similar mark) to identify identical goods or services, a the right to exclude third parties from removing the mark as placed by registrant or altering the form of the mark. A registrant may also file infringement actions, opposition actions or petitions for cancellation of subsequent conflicting registrations.
22. Can an application be opposed or cancelled by third parties?
Yes. Third parties may file opposition to an application within 30 days following publication of a mark. Any party may apply for cancellation of a mark based on absolute grounds of irregistrability, at any time, and may file for cancellation based on relative grounds within five years from registration.
23. Can an application or registration be assigned?
A registration may be assigned. An application can also be assigned but registration of such assignment will occur at the time the registration is issued.
24. Must an assignment include goodwill?
No. An assignment may be with or without goodwill. An assignment must make reference to a specific economic consideration.
25. Does an assignment have to be recorded?
Yes. If an assignment is not recorded, it will not be effective against third parties.
26. Can an application or registration be licensed?
Yes.
27. Does a license have to be recorded?
Yes. All license agreements must be recorded and may not contain restrictions on commerce.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Peru.
29. How long does a registration last?
The term of registration is ten years from date a registration is granted, and is renewable for ten-year periods if a renewal application is filed.
30. What is required to renew a registration?
To renew a registration, one must file a renewal application, a power of attorney, and pay the official fee.
31. Is it necessary to indicate a trademark registration on goods or services?
No. The use of markings is optional. Use of ? "marca registrada", M.R. or any other equivalent term to registration is prohibited in respect to unregistered marks. A product bearing a trademark containing a geographical name must indicate where the product was actually made.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
No electronic filing is available. However, information regarding the Peruvian Trademark Office may be found at www.indecopi.gob.pe. |
