9.1 Specify the courts which have jurisdiction over IPR infringement cases.
INDECOPI is an autonomous body responsible for monitoring fair competition, protection of intellectual property and defence of consumers' rights.
For the purpose of defending intellectual property rights, INDECOPI has three Offices: the Distinctive Signs Office, the Copyright Office, and the Inventions and New Technologies Office. At the first level, each of these Offices deals with cases within its competence. At the second (and last) administrative level, there is a Tribunal for the Defence of Competition and Intellectual Property Protection, which deals with cases related to the defence of competition, consumers' rights and intellectual property. The Tribunal is composed of Chambers for the defence of competition and for intellectual property protection, the latter being responsible for intellectual property cases.
9.2 Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the court by the right holder?
The holder of an intellectual property right is empowered to initiate action through administrative channels, for example, regarding the granting of a right, proceedings for infringement, observations, nullity, annulment of trademark registrations, inter alia.
Regarding representation, natural persons may appear in person or appoint an attorney. Legal persons must be represented by an attorney, who requires the relevant powers in order to act.
There are no provisions prescribing the mandatory personal appearance of the right holder before the INDECOPI Offices or the Tribunal.
9.3 What authority do the judicial authorities have to order, at the request of an opposing party, a party to a proceeding to produce evidence which lies within its control?
Pursuant to Article 76 of Supreme Decree No. 02-94-JUS – Single Harmonized Text of the Law on General Regulations for Administrative Procedures – if the evidence furnished by the parties is not sufficient to form an opinion, the administrative authority may order the presentation of the additional evidence it deems necessary.
Furthermore, Article 2 of Legislative Decree No. 807 – Law on the Functions, Regulations and Organization of the INDECOPI – states that the INDECOPI may require natural or legal persons to present any type of document. Any person who provides false or misleading information, destroys or alters any book, register or document requested shall be punishable by a fine, which shall be doubled if the offence is repeated.
9.4 What means exist to identify and protect confidential information brought forward as evidence?
According to Article 6 of Legislative Decree No. 807, any information received by an Office or the Tribunal for the Defence of Competition and Intellectual Property Protection that is an industrial or trade secret must be declared restricted information by the relevant Office or Tribunal. In such cases, the Office or Tribunal takes all measures necessary to guarantee the restriction and confidentiality of the information, on pain of liability.
The only persons who have access to documents and information declared to be restricted are officials of the relevant Office or Tribunal, officials of INDECOPI assigned to the case and, where appropriate, members and staff of the Tribunal for the Defence of Competition and Intellectual Property Protection. Officials who violate the restriction placed on the information shall be dismissed and barred from exercising any public function for up to 10 years, without prejudice to any criminal liability.
9.5 Describe the remedies that may be ordered by the judicial authorities and criteria, legislative or jurisprudential, for their use:
- damages, including recovering of profits, and expenses, including attorney's fees;
- destruction or other disposal of infringing goods and material/implements for their production;
- any other remedies.
There are two types of administrative injunction: decisions, which resolve the substance of the matter and bring the proceedings to an end; and interlocutory resolutions, which prescribe administrative acts to be carried out.
Damages, including recovery of profits, and expenses, including attorney's fees;
Destruction or other disposal of infringing goods and materials/implements for their production;
Any other remedies.
According to Article 242 of Legislative Decree No. 823 – Industrial Property Law – infringements of industrial property rights give rise to the imposition of the penalty of a warning or a fine, without prejudice to any measures that may be ordered to effect the cessation of the infringing acts or to prevent them taking place. The range of fines is determined by the competent Office. Recidivism is considered an aggravating circumstance, with the result that the sanction applied may not be less severe than the previous sanction.
According to Article 177 of Legislative Decree No. 822 – Copyright Law – the administrative authority may order inter alia the cessation of the unlawful act; the imposition of a warning or fine; the attachment or destruction of products, labels, packaging, and advertising materials; the temporary closure of the infringing establishment; publication of the judgement in a national newspaper.
Pursuant to Article 47 of Decision 391 of the Andean Community – Common Regime on Access to Genetic Resources – the administrative authority may apply administrative sanctions, such as fines, preventive or definitive confiscation, temporary or definitive closing down of establishments and disqualification of the violator from applying for new accesses in cases of violation of the aforementioned Decision.
Action for damages can only be brought through judicial channels (see the reply to question 5). The administrative body is the only body empowered to impose fines on infringers.
9.6 In what circumstances, if any, do judicial authorities have the authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distributors?
Pursuant to Article 2 of Legislative Decree No. 807, INDECOPI may convene and question persons concerned by the investigation or their representatives, employees, officials, advisers and third parties, using the technical means it deems necessary in order to compile a complete and faithful record of their declarations, and may use sound or video recordings for this purpose. It is also empowered to order the infringer to reveal the identity of third parties involved in the infringement. If the persons concerned by the investigation furnish false or misleading information, INDECOPI may impose a sanction in the form of a fine.
9.7 Describe provisions relating to the indemnification of defendants wrongfully enjoined. To what extent are public authorities and/or officials liable in such a situation and what "remedial measures" are applicable to them?
According to Article 28 of Supreme Decree No. 02-94-JUS – Single Harmonized Text of the Law on General Regulations for Administrative Procedures – officials and employees who do not satisfy the provisions of the aforementioned Law are guilty of misconduct that is punishable in accordance with Article 26 of Legislative Decree No. 276 – Basic Law on Administrative Functions. The sanctions for misconduct prescribed in Article 26 of the Basic Law on Administrative Functions are a verbal or written warning, suspension without pay for up to 30 days, temporary cessation of work without pay for up to 12 months, and dismissal.
9.8 Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.
The requirements, the cost and the duration of proceedings vary depending on the matter to be dealt with by each of the Offices or the INDECOPI Tribunal.
On average, copyright infringement proceedings take three to five months and the approximate cost of bringing a case is US$42.00 for each complaint. If precautionary measures are sought, the approximate cost is US$42.00 for each measure requested.
The procedure for any action for infringement of distinctive signs is laid down in Legislative Decree No. 823, Articles 240-246. The proceedings last for around four-six months and the approximate cost of bringing a case is US$42.00. If precautionary measures are sought, the approximate cost is US$42.00 for each measure requested.
The average time required for settling a case through administrative channels, if an appeal is lodged at both the first and second levels, is approximately one year.