Background
In June 2017, Latam Airlines Group S.A. (hereafter, Latam) filed a complaint against Atrapalo Peru S.A.C. (hereafter, Atrapalo) for using LAN and LATAM trademarks as keywords in ads paid to Google Adwords, in order to identify the online tickets sales through a link that appears as one of the search results. According to Latam, this behavior could create a likelihood of confusion in consumers.
First instance
The Trademark Office in the first administrative instance pointed out that the use of these names as keywords for users to access the services provided by Atrapalo, is not an argument to establish that the sale of online tickets is identified by the LAN and/or LATAM trademarks. On the contrary, it was always verified that the links referred to the services on the website identified by Atrapalo.
Latam filed an appeal, pointing out that there is a use in the market, and it is given through the purchase of the words LAN and LATAM, as Adwords. The user on the Internet when typing LAN and LATAM would see, as a result, the Atrapalo link, believing that there is a commercial relationship with Latam that could cause likelihood of confusion.
Atrapalo pointed out that they are an authorized sales channel for tickets in Latam and the referred links do not identify the services with the complainant’s trademarks.
Second instance
Preliminarily, the Intellectual Property Chamber mentioned the Principle of Territoriality in order to analyze whether it is appropriate to evaluate the infringement against Industrial Property Rights, since it is essential that the use of the subject signs should be made in the country where they are registered, being essential that the Peruvian consumers have been able to access the platform, which was confirmed.
On the other hand, the Intellectual Property Chamber indicated that the use of a distinctive sign or trademark, through keywords on the internet, could be considered as a use in commerce. However, for such use to be able to be configured as an infringement of Industrial Property Rights, the possibility of the existence of likelihood of confusion or association must be determined. In the case, it was verified that (i) there is a commercial relationship between Atrapalo and Latam, so the former offers Latam airline’s tickets; and, (ii) information on Latam Airlines placed in Atrapalo´s website, so the consumer becomes aware of the business origin of the aforementioned tickets and that through the Atrapalo website, accesses an intermediary for their purchase.
Therefore, there is no likelihood of confusion or association generated in the market behavior of Atrapalo.
The Takeaways
We consider that this resolution is a valuable signal to the market by the Agency for Intellectual Property and Competition – INDECOPI. In this way, technology, an in particular search engines as Google, enables consumers to improve their situation so they can access to goods and services more quickly and easily, which does not imply that the use of certain Industrial Property goods, in particular trademarks, are considered as infringements per se.
In this sense, highlighting the use of trademarks in commerce and the likelihood of confusion as necessary and concurrent elements for the configuration of an infringement is essential to limit the rights of trademark owners and avoid restrictions in the market.
Alejandro Castro Angulo
Lawyer – Managing Director