The Prohibition of Registration of Descriptive Marks As Trademark in Peru

1. Legal basis

The prohibition of registration of descriptive marks as trademark is stated in Article 135, paragraph e) of Decision 486, Industrial Property Common Regime.

Article 135 of Decision 486 establishes “that may not be registered as trademarks those marks which:
Paragraph e) consist exclusively of a sign or statement that may serve in commerce to describe the quality, quantity, purpose, value, geographic origin, time of production or other data, characteristics or information concerning the goods or services for which the sign or indication is to be used, including laudatory expressions for those goods or services.”

2. Ground

The ground for the prohibition of registration of descriptive marks as trademark is double. On the one hand, it finds support in the lack of distinctive character of the descriptive marks because far from indicating the business origin of the products or services, the descriptive marks provide the public with information of the property and characteristics of the pertinent goods or services. On the other hand, it finds support in the need of keeping freely available the descriptive marks so that they can be used by all entrepreneurs that operate in the corresponding market sector. [1]

3. What a descriptive mark is

The descriptive denomination informs directly of the characteristics of the good or service. [2]

Now, in the cases in which it is discussed if a mark is descriptive for directly informing about the characteristics of the good or service it intends to cover, it must be taken into account that a mark can be considered descriptive only if it informs directly about the essential characteristic of the good or service to be covered.

The aforementioned has been interpreted in that way by scholarly writings and case-law of the Andean Court of Justice of the Andean Community.

Scholarly writings have indeed stated the following:

“In order to be “descriptive” in a trademark sense so as to prevent its registration, a trademark must designate a primary and essential quality of the product it intends to distinguish. By pointing it out its essence and not only any peripheral element, it is the product itself which is indirectly designated, and this deprives the trademark of any exclusivity right.” [3]

Likewise, the case-law of the Andean Court of Justice of the Andean Community has stated that descriptive marks are those which designate the essential or fundamental quality of a good or service. [4]

We believe that this interpretation has not been considered neither by the Trademark Office nor by the Tribunal of the Trademark Office in the following resolutions:

– Resolution Nº 8048-2011/DSD-INDECOPI dated May 26, 2011 and Resolution N° 2465-2012/TPI-INDECOPI of November 29, 2012, which denied registration of trademark SMART LED LIGHTING, in classes 7 and 11.

– Resolution Nº 019049-2012/DSD-INDECOPI dated December 3, 2012, which denied registration of trademark BUILDING BETTER INSIGHTS, in class 36.

– Resolution Nº 002826-2013/DSD-INDECOPI dated February 26, 2013 and Resolution N° 3931-2013/TPI-INDECOPI of November 22, 2013, which denied registration of trademark MINERAL THERAPY, in class 3.

– Resolution Nº 006728-2013/DSD-INDECOPI dated May 7, 2013, which denied registration of trademark NEUTRO BALANCE, in class 3.

– Resolution N° 3553-2013/DSD-INDECOPI dated March 4, 2014, which denied registration of trademark VIRTUAL CAR, in class 36.

4. Descriptive marks of a geographical origin

As provided for in Article 135, paragraph e), of Decision 486, descriptive marks may serve in commerce to designate, in respect of the goods or services for which they are to be used, several details, characteristics or information.

Said details, characteristics or information include the geographical origin of the relevant goods or services.

The Tribunal of the Trademark Office’s case-law has established the criteria to be borne in mind, that is, that a sign will be deemed to be a sign which describes the geographical origin of the products or services for which it is to be used if it directly indicates the geographical origin of such products or services.

A sign will directly indicate the geographical origin of such products or services if it exclusively consists of the name of a geographical area which is typical or usual for the manufacture of the products or provision of the services.

These criteria have been embraced by the Tribunal of the Trademark Office in the following resolutions, inter alia:

– Resolution N° 1355-2012/TPI-INDECOPI dated August 3, 2012, which denied registration of the TAIWAN PLUS trademark in class 12, given that it was considered that said trademark was descriptive of the geographical origin and of a characteristic of the “motorcycles” and “scooters” it purported to distinguish, because TAIWAN is the name of a country known for its manufacturing industry of high-technology goods and PLUS makes reference to something to which something else has been added.

– Resolution N° 4464-2014/TPI-INDECOPI dated December 2, 2014, which denied registration of the ICA GOLD GRAPES trademark in class 31, due to it was considered that such trademark was descriptive of the geographical origin and the quality of the “grapes” it purported to distinguish, since ICA is the name of a geographical zone in Peru known for its manufacture of grapes and the expression GOLD GRAPES would be understood as its Spanish translation, “UVAS DE ORO”, by Peruvian consumers.

5. Self-laudatory terms as descriptive marks

According to the provisions set forth in Article 135, paragraph e), of Decision 486, descriptive marks include self-laudatory terms.

The Tribunal of the Trademark Office has actually issued resolutions where it has concluded that the trademarks subject matter of registration applications are actually self-laudatory terms. For instance in the following cases:

– Resolution N° 0944-2009/TPI-INDECOPI dated April 22, 2009, which denied registration of the SUPER FOAM trademark in class 20.

– Resolution N° 1071-2009/TPI-INDECOPI dated May 4, 2009, which denied registration of the UTILÍSIMO trademark (VERY USEFUL trademark) in class 08.

– Resolution N° 2143-2011/TPI-INDECOPI dated October 3, 2011, which denied registration of the SIMPLEMENTE UNICO trademark (SIMPLY EXTRAORDINARY trademark) in class 16.

6. Misspelling of descriptive terms

According to the criteria embraced in the Tribunal of the Trademark Office’s case-law, phonetic or graphic misspeling of descriptive terms are also included in the prohibition of registration of descriptive marks.

These criteria have been embraced in the following resolutions issued by the Tribunal of the Trademark Office, inter alia:
– Resolution N° 0326-2012/TPI-INDECOPI dated February 23, 2015, which denied registration of the BIOENZYME trademark in class 1, given that it was considered that said trademark was the misspelling of the word BIOENZIMA which is the Spanish translation of BIOENZYME.
– Resolution N° 4680-2014/TPI-INDECOPI dated December 16, 2014, which denied registration of the DIABT trademark in class 3, due to it was considered that such trademark was the misspelling of the word DIABETES.

7. Descriptive words in a foreign language

The Tribunal of the Trademark Office’s case-law has concluded that a word in a foreign language will be considered to be a descriptive word in the following cases:

1. i) If the word is being used in Peru’s common language to describe any given product, service or activity. For example: “light”, “premium”, “small”, “medium”, “large”, “extra large”, “delivery”, and “fashion”.
2. ii) If the word is not being used in Peru’s common language, but its meaning is understood by the relevant sector of Peruvian consumers. For example: “magnificent”, “brilliant”, “ceramic”, “energy”, and “select”.

iii) If the word is descriptive in its country of origin and there is a quiet frequent trade between Peru and said country of origin, and as a result, products using said descriptive word are being brought to Peru. For example: “singles”.

These criteria have been embraced by the Tribunal of the Trademark Office in the following resolutions, inter alia:

– Resolution N° 0009-2015/TPI-INDECOPI dated January 5, 2015, which denied registration of the COMPLETE CNG trademark in class 7, given that it was considered that said trademark was descriptive of a characteristic of “compressed natural gas systems” it purported to distinguish because its meaning “COMPLETE COMPRESSED NATURAL GAS” would be understood as its Spanish translation, “GAS NATURAL COMPRIMIDO COMPLETO”, by Peruvian consumers.

– Resolution N° 2097-2015/TPI-INDECOPI dated May 21, 2015, which denied registration of the EASY trademark in class 35, due to it was considered that such trademark was descriptive of a characteristic of the services it purported to distinguish since its meaning would be understood by Peruvian consumers.

In addition, the Tribunal of the Trademark Office’s case-law has established that the same criteria applicable to misspelling of descriptive terms in the Spanish language will be applicable to misspelling of descriptive terms in a foreign language.

8. Secondary Meaning for descriptive marks

The last paragraph of Article 135 of Decision 486 provides that “notwithstanding the provisions set forth in paragraphs (…), e) – prohibition to register descriptive marks as trademark-, (…), a sign can be registered as a trademark where its continued use in a Member Country by applicant or decedent has endowed it with distinctiveness in respect of the products or services to which it is applied.”

The last paragraph of Article 135 of Decision 486 has incorporated the Secondary Meaning (Acquired or Distinctiveness) by establishing that it is possible to obtain registration of descriptive marks as trademark where its continued use in the Member Country of the Andean Community in which its registration has been applied for, by applicant or decedent, has endowed it, by reason of its continued use, with distinctiveness in respect of the products or services it purports to distinguish.

In Peru, according to the criteria established in the Tribunal of the Trademark Office’s case-law, in order for a mark which lacks distinctiveness – as a descriptive mark – to acquire Secondary Meaning, the following conditions must be met:

1. i) Continued use of the mark in the market must be proved;
2. ii) Consumers must regard said use as a trademark use; and

iii) The mark the use of which has been proved must be categorically identified with only one business origin (in this case, the business origin of whoever alleges Secondary Meaning).[5]

Moreover, said Tribunal resolutions have stated that the use in the market of a descriptive mark can be proved by providing evidence, like market surveys or massive and extensive advertising[6], and said evidence must be dated prior to the date of the trademark application. [7]

In some case-law, the Tribunal of the Trademark Office has resolved that a descriptive mark has proved Secondary Meaning. For instance, in Resolution Nº 3084-2013/TPI-INDECOPI dated September 9, 2013[8], the Tribunal of the Trademark Office resolved that the expression INSTITUTO CULTURAL PERUANO NORTEAMERICANO (NORTHAMERICAN PERUVIAN CULTURAL INSTITUTE), used in relation to educational services and cultural activities, was descriptive because it directly informed consumers that said services and activities were provided by an entity jointly organized by Peruvian and U.S. individuals and that, in spite of it, it had acquired a Secondary Meaning.

9. Comment

We believe that it is advisable to bear in mind the criteria referred to above, contained in scholarly writings and case-law, at the time of filing a trademark application, even though sometimes in our view case-law does not apply properly the foregoing criteria.

[1] FERNÁNDEZ-NOVOA, Carlos. Tratado sobre Derecho de Marcas. Madrid: Marcial Pons, 2001. Pag.131

[2] Ibid, pag.132

[3] BENTATA, Víctor. Reconstrucción del Derecho Marcario. Caracas: Jurídica Venezolana,1994. Pag.166

[4] Judicial Interpretation of April 17, 1998 issued in connection with Proceeding Nº 10-IP-96. At http://comunidadandina.org.

[5] Resolution Nº 411-2014/TPI-INDECOPI dated April 10, 2014, issued in connection with File Nº 468997-2011, application for registration of the AS SEEN ON TV & LOGOTYPO trademark in class 28. At www.indecopi.gob.pe

[6] Resolution Nº 2572-2015/TPI-INDECOPI dated June 19, 2015 issued in connection with File Nº 510487-2012, application for registration of the FERIA DEL HOGAR trademark in class 35. At www.indecopi.gob.pe

[7] Resolution Nº 0986-2013/TPI-INDECOPI dated March 22, 2013 issued in connection with File Nº 443698-2013, application for registration of the PIEZA UNICA trademark in class 14. At www.indecopi.gob.pe

[8] Issued in connection with File Nº 368419-2008, application for the registration of the INSTITUTO CULTURAL PERUANO NORTEAMERICANO CHICLAYO & DESIGN trademark in class 41. At www.indecopi.gob.pe