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When coexistence agreements are not sufficient

In a large majority of countries, the trademark legislation establishes that when there is an agreement entered into by and between two companies that are competing for the registration of similar trademarks to be used in the market, their registration coexistence shall be accepted.

In the case of Peru, if the law permits the presentation of coexistence agreements, those agreements shall establish a series of limitations regarding the form and effective use of the brands in the market in order to be accepted.

Although there is no specific list of requirements that any coexistence agreement must fulfill, the Intellectual Property Chamber of INDECOPI (National Institute for the Defense of Free Competition and Intellectual Property) has accepted the registration of trademarks based on the coexistence agreements that establish, among other issues:

Differences in the use of logotypes (if any) – for example in the use of colors, sizes or elements within the logotype.
Differences between the point sales / marketing channels.
Differences in the specific products that shall be commercialized under each trademark.
Differences in the commercialization stages of the products
Differences in the publicity issued.
In general, in order to obtain the trademark registration the maximum differentiation possible in the use of the products in the Peruvian market is required.

To that respect, criticism of the administrative authorities is based on the fact that their functions have always been limited to the registration area. In fact, it has always been stated through different resolutions that the analysis they carry out is regarding registration only; however they seek to regulate the functioning of the agents and intervene in the market.

At the moment and while a resolution that modifies this criterion be issued and the acceptance of the coexistence agreements is allowed without further requirements other that the sole acceptance by the parties concerned, the only thing to do is trying to prepare coexistence agreements that are precise enough, or in any case, previously evaluating the commercial relevance of the same.

Carmen Sánchez-Puelles