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Approving Regulations on Legislative Decree Nº 1075 about Distinctive Signs in Peru

On May 29, 2017, it was published at the Official Peruvian Gazette the Supreme Decree N° 059-2017-PCM approving Regulations on Legislative Decree N° 1075, which governs complementary dispositions of Decision 486.

The Regulations, comprised of 19 articles, cover issues such as the filing of POA, the assignment of the filing date of trademark application, the qualification of administrative sanctioning procedures, the withdrawals of procedures or legal claims, among others.

Previously, a party having filed a POA before the Trademark Office (TO) could indicate during a new proceeding that he had already filed such a document before the TO. This way, the party was not obliged to file the POA in the new proceeding. Presently, besides this possibility, the party is not obliged to file the POA if he informs the TO that the POA is recorded at the Public Registry, as provided by article 2° of Regulations.

Furthermore, in case of omission of any of the trademark application essential requirements —i.e. applicant’s identification data, reproduction of the mark, clear specification of goods and services, proof of payment— the TO did not allocate a filing date. Currently, such an omission will not only avoid the allocation of a filing date, but also the allocation of the application serial number. It is so provided in article 3° of Regulations, which established that a term of 60 working days will be granted to the applicant for meeting the requirements.

Additionally, article 8° of Regulations state that the following proceedings are qualified as administrative sanctioning proceedings: the proceedings for filing false information or hiding information and documentation to the authority, the proceedings about malicious complaints containing false claims, the proceedings related to the illegal use of expressions such as “registered trademark”, “R.T”, “denomination of origin”, “O.D”, between others. For this reason, this type of proceedings will be brought ex officio, i.e., at the initiative of the administrative authority.

According to recent amendments, the parties may not file additional briefs and allegations when the proceeding is at the final stage before the Intellectual Property Board. The new Regulations indicate that the authority will notify the parties that the resolution is at the final stage banning the filing of additional briefs since the sixth day of the notification date. However, article 9° also indicates the parties will be entitled to file withdrawals, conciliations or settlements at this stage.

Article 13° of regulations makes an interesting differentiation between the consequences of filing a withdrawal of the proceeding and the withdrawal of the legal claims. This way, the withdrawal of the proceeding has the effect of overruling the resolutions handed down during the proceeding, whereas the withdrawal of the legal claims has the same effects of a resolution that dismisses a legal action.

Finally, in order to expedite the proceeding and avoid the backlog of the second administrative instance, article 17° of Regulations stipulates that the remedies for reconsideration which, besides new evidence, are founded in legal analysis and the new interpretation of the evidence, will be qualified as appeals.

Jimena Ugarte