REGISTERED TRADEMARK | In the exercise of my profession, a frequent error that I have found in many companies, be they small or large, is to believe that registering a trademark in INDECOPI is enough, and therefore there is no need to worry until the time has come to carry out the respective renewal, which is every ten years.
However, reality ends up showing us that having a registered trademark is not enough to ensure one of the main assets of companies today. Let us not forget that one of the main functions of trademarks in the market is to identify the business origin of the products or services, which benefits not only the owner but also their clients (consumers), who can be sure that the product or service that they buy with said brand carries with it a quality characteristic of the manufacturer or supplier (usually the owner of the trademark).
It is important to point out that the exclusive rights over the trademarks that are registered are a legal monopoly granted by the State, so their owners are obliged to make use of them. That is why our legislation establishes that whoever is interested in a trademark, and it is already a registered trademark in favor of a third party, the possibility of requesting its cancellation due to lack of use, and the cancellation must be filed against a trademark that has been registered for at least three years.
The problem arises because - even when the owners or holders of the trademarks are aware that they must use them - they believe that their use occurs when it is printed at the top of their receipts or invoices, or that it is enough to place it on the labels or wrappers of their products. Even due to the informality in which our local economy works, many companies do not consider it necessary to ask their suppliers for invoices or receipts for the preparation of said labels or wrappers. All this then redounds against the owner himself and results in the cancellation of the trademark.
Due to this, I have allowed myself to elaborate a series of guidelines as useful advice, for the maintenance and good use of registered trademarks, hoping it will be useful for those who need it:
1) The first thing is to keep in mind which are the products and/or services that are distinguished by the registered trademark. Our trademark legislation allows the cancellation of trademarks due to lack of use in two ways:
- PARTIAL (for some of the products and/or services that were requested in the trademark registration, and consequently the trademark would still be valid), or
- TOTAL (for all the products and/or services that were requested in the trademark registration, and consequently the trademark would be lost).
2) Just as important as the first thing is to know if the brand is composed of a word and/or accompanied by some graphic element: logo, isotype, label, lettering, figure, characteristic writing, etc., because, in the documents that prove the use must appear not only the registered word or term, but also the use of the graphic element must be proven.
3) Likewise, it must be considered that, as a general rule, whoever appears as the owner or owner of the trademark is the one who must prove that they are using it. In this sense, the documents that prove the use (sales receipts or invoices, etc.) must be issued by the owner of the trademark, and if it is used by a third party authorized by the owner, it must be through a use license agreement or authorization letter and consequently it will be the latter who can prove its use.
4) In summary, in the case of product brands, it is demonstrated by means of proof of payment (slips and/or invoices) where the trademark must be indicated in the "description" column (not in the header), for example: if your trademark is "STAR" to distinguish shoes, you must indicate on your tickets or invoices "10 dozen star shoes" or, failing that, the code used to identify it, which must also be accredited. In addition, it is the current practice of INDECOPI to accept as proof of use that the brand may appear printed on the bottom (hatching) of the invoice or sales receipt.
5) In the case of service marks, it is demonstrated by means of proof of payment (tickets and/or invoices), where the registered trademark will be placed in the header and in the "description" column the detail of the services provided, For example: if your service brand is "EL PEZ" for seafood restaurants, you must place in the heading EL PEZ (and if possible below a summary of the line of business) and in the description column: "for sale of two plates of cebiches”.
6) If the brand is accompanied by any graphic element, it is important to file the receipts or invoices of its suppliers for the corresponding preparation, design, or manufacturing (labels, logos, packaging).
