Abstract: By Resolution N° 4665-2014/TPI-INDECOPI the Intellectual Property Administrative Court (hereinafter, the Trademark Authority) issues a new precedent of mandatory compliance about Trademark Coexistence Agreement. Now, it should contain certain minimum conditions so it can be accepted by the authority provided that it serves the purpose of the agreement.
By Resolution No. 4665-2014 / TPI-INDECOPI dated December 15th, 2014, and published in the Official Gazette “El Peruano” on February 11, 2015, the Intellectual Property Chamber issued a new precedent of mandatory compliance, which establishes a series of minimum requirements that any coexistence agreement between trademarks must comply with the purpose of reducing to the maximum the risk of confusion:
- Information about the signs that are the object of the agreement, description of the elements that make up the trademark: word and figurative elements, as well as the products and services that are distinguished by the trademark.
- Delimitation of the territorial scope within which the agreement will be applicable.
- Delimitation of the products and/or services to which the trademarks are subject matter of the agreement of coexistence in the market. To this end, it will be necessary for the parties to request the effective limitation of the products and/or services in the respective registrations and requests.
- Delimitation of the form of use and/or presentation of signs.
- Indicate the consequences in case of breach of the agreement.
- Establish mechanisms for the resolution of dispute in case of litigation between the parties.
While a coexistence agreement between trademarks may meet the minimum requirements set forth in the preceding paragraph, it is important to note that acceptance of the agreement is a faculty of the Intellectual Property Authority. In that sense, the authority must first ensure the general interest of consumers without detriment the importance of the private interest of coexisting in the market.
Likewise, the coexistence agreement should not violate mandatory rules, in particular antitrust legislation, so any clause that creates a risk of restriction of free competition should be denied.
Finally, the Intellectual Property Chamber is clear when it states that letters of consent cannot be considered as coexistence agreements, since they are unilateral expressions of will that are not within the national legislation normative assumption.
Alejandro Castro Angulo
Lawyer – Managing Director