Peru's unfair competition law (Decree Law No. 26122) does protect geographical indications because it considers that the performance of acts or the use of expressions which may mislead as to the geographical origin of a product or service is unfair. In particular, it deems unfair the use of false "indications of sources" and false "appellations of origin", as well as the unauthorized use of appellations of origin, even where accompanied by such expressions as "type", "model", "system", "kind", "variety" or the like.
The legal regime in Peru, set out in domestic law (Legislative Decree No. 823, the Industrial Property Act) and in the Supranational Andean law (Decision 344 of the Commission of the Cartagena Agreement) is a single regime of protection for appellations of origin applicable to all products, provided they meet the relevant recognition requirements. Again, these enactments contain provisions in the trademarks regime involving absolute prohibitions on registering distinguishing signs where they reproduce or imitate a protected appellation of origin, consist of a national or foreign geographical indication likely to lead to confusion regarding the products or services to which they apply, or their use may mislead the public with regard to the origin, source, quality or characteristics of goods for which trademarks are used.
The Peruvian regulations contain a specific regime not on "geographical indications" but on "appellations of origin" and, in this respect, in keeping with the definition contained in Article 219 of Legislative Decree No. 823 and Article 129 of Decision 344, it applies solely to goods and not to services.
The following legal provisions apply in Peru to recognition and protection of appellations of origin and suppression of the improper use of geographical indications: • Legislative Decree No. 823, the Industrial Property Act. • Decree Law No. 26122, the Unfair Competition Act. • Decision 344 of the Commission of the Cartagena Agreement.
The concept set out in Article 22.1 of the TRIPS Agreement does not draw a distinction between an appellation of origin and an indication of source. Indeed, it employs an expression that encompasses various levels of protection, depending basically on the nature of the good distinguished by the indication and its use on the market at the time of the entry into force of the Agreement. In this respect, the regulations in Peru relate to the appellations of origin regime, which is based on prior official recognition in accordance with the relevant provisions.
For example, Peru recognizes "Pisco" as a domestic appellation of origin, one that has been used since the 18th century and distinguishes and protects the grape brandy produced for many years on the coast of the Departments of Lima, Ica Arequipa, Moquegua and the valleys of Locumba, Sama and Caplina in the Department of Tacna. Pisco is geographically a place on Peru's southern coast which has existed since the beginning of the 17th century with that name. It is a town, a port and province and they acquired a great reputation for producing a grape brandy which took on precisely the name of the region in which it was produced and the port through which it was exported. The qualities typical of this brandy are the result of an exclusive Peruvian production process developed in that region, as well as the use of a variety produced by a genetic mutation of black grapes, caused by the plant's adaptation to the soil and climate of the Pisco region, which extend into the valley where similar conditions prevail. The legal instruments protecting appellations of origin in Peru are the following: • Legislative Decree No. 823, the Industrial Property Act. • Decree Law No. 26122, the Unfair Competition Act. • Decision 344 of the Commission of the Cartagena Agreement. It should be noted that the Peruvian Government has been engaging in activities to recognize a number of possible appellations of origin from the various geographical areas of Peru.
Article 23.2 of the TRIPS Agreement establishes a higher level of protection for wines and spirits in that any registration of a trademark which contains or consists of a geographical identification identifying wines or spirits shall be denied for wines or spirits not having that origin. In this respect, Peruvian industrial property law (Legislative Decree No. 823 and Decision 344 of the Commission of the Board of the Cartagena Agreement) establishes that signs cannot be registered as trademarks if they are capable of misleading business circles or the public as to the origin of the products or services involved. It also states that signs cannot be registered as trademarks if they reproduce or imitate a protected appellation of origin or consist of a domestic or foreign geographical indication capable of misleading the public as to the origin, source, qualities or characteristics of the goods for which the trademarks are used. This applies regardless of the products to which a geographical indication or geographical appellation refers.
Legislative Decree No. 823, the Industrial Property Act, establishes that the use of an appellation of origin by unauthorized persons is deemed a punishable offence, including cases in which the appellations are accompanied by such indications as kind, type, imitation and the like, which mislead the consumer. Again, Decree Law No. 26122, the Unfair Competition Act, states that it is deemed unfair to use false indications of source and false appellations of origin and to make unauthorized use of appellations of origin, even where they are accompanied by such expressions as type, model, system, kind, variety or the like.
Peru's Industrial Property Act (Legislative Decree No. 823) defines an "appellation of origin" as one which uses the name of a geographical region or place in order to designate a product originating therein and the quality and characteristics of which are due exclusively or essentially to the place's natural and human factors. Again, the Common Andean Regime contained in Decision 344 establishes that "appellation of origin" shall be taken to mean a geographical indication consisting of the name of a specific country, region or place or consisting of a name which, without being that of a specific country, region or place, relates to a specific geographical area, used to designate a product originating therein and with qualities or characteristics of which are due exclusively and essentially to the geographical environment in which it is produced, including natural and human factors.
Under the definitions contained in the above-mentioned legal provisions, the relevant geographical connection and qualitative connection (natural and human factors) would be essential for the purpose of recognition of an appellation of origin.
For the purpose of recognizing an appellation of origin, it is determined whether the appellation is in keeping with the definitions in the above-mentioned legal provisions, with the emphasis placed on the natural and human factors of the geographical area of production, extraction or manufacture of the product to be distinguished by the appellation, as well as the particular characteristics of the products in question.
In view of the nature of an appellation of origin, which owes its existence to the place's natural and human factors (which should be unique), the human participation in the making of the product protected by an appellation of origin is often conspicuous, since protection of an appellation is recognized precisely because of such human factors, combined with the natural ones.
Under the Peruvian appellations of origin regime, the requirement is that the product designated by the appellation should originate in a particular geographical region or area, and that the quality or characteristics of the product are due exclusively or essentially to the place's natural and human factors; if the possibility of other intellectual property rights such as patents or trademarks were involved, such involvement would not be essential.
The competent authority for declaring the protection of an appellation of origin in Peru, and hence for determining the geographical area covered by the rights, is the Distinguishing Signs Office of National Competition and Intellectual Property Protection Institute (INDECOPI).
Peruvian legislation does not contain criteria for homonymous geographical indications or appellations of origin.
Yes. Legislative Decree No. 823, Peru's Industrial Property Act, establishes that the State may, under bilateral or multilateral agreements, foster recognition abroad of Peruvian appellations of origin and grant, as a matter of reciprocity, protection to foreign appellations of origin by including them in a special section of the Register of Appellations of Origin. Again, under Decision 344 the competent national authority may declare protection of appellations of origin of member countries of the Andean Community. In the case of applications from third countries, protection may be provided, whenever it is allowed under any agreement to which the country is a party or where the third party grants reciprocal treatment.
To supplement the reply to question 15 above in regard to appellations of origin not protected in the country of origin, Article 142 of Decision 344 of the Commission of the Cartagena Agreement stipulates that, in the case of recognition of appellations of origin of countries outside the Andean Community, appellations of origin must have been declared as such in their countries of origin. Accordingly, under the terms of Decision 344, in the case of a foreign appellation of origin not recognized or protected in the country of origin, no application for protection can be made in any country of the Andean Community.
Peru's industrial property law draws no distinction between the three legal categories mentioned. The general protection regime relates to "appellations of origin". The rules in force contain no criteria regulating homonymous appellations of origin, for any kind of product.
In Peru, protection of an appellation of origin can be declared ex officio or at the request of anyone who has a legitimate interest therein. Natural and legal persons are deemed to hold a legitimate interest if they are directly engaged in the extraction, production or making of the products that are to be protected by the appellation of origin; State, Department, provincial or municipal authorities will also be considered interested parties in the case of appellations of origin from their respective areas.
In Peru the competent authority for applications to protect an appellation of origin is the Distinguishing Signs Office of the National Competition and Intellectual Property Protection Office (INDECOPI).
In Peru protection of an appellation of origin may be declared ex officio.
The fees to apply for a declaration of protection of an appellation of origin are administrative charges.
The law requires that, for the purpose of applying for recognition of an appellation of origin, not only geographical criteria (area of production, extraction or manufacture) must be given but also a detailed description of the product, together with references regarding the characteristics and human factors influencing the definition.
An application for protection of an appellation of origin must include the following information: • Name, domicile, place of residence and nationality of the applicant. • The legal interest on which the request for protection is based. • The appellation of origin applied for. • The geographical area of production, extraction or manufacture. • A detailed description of the product or products to be distinguished by the appellation applied for, together with its or their characteristics. • Any other information required by the competent Office.
Yes. It is compulsory to describe in detail the products for which the application for an appellation of origin is being made.
Once an application for protection of an appellation of origin is admitted and the official requirements have been met, it is published in the Official Gazette (Diario Oficial El Peruano), following the procedure for the registration of trademarks. Hence, anyone who is affected has 30 working days following publication to submit any comments and, where appropriate, the applicant has 30 further working days to make any corresponding rebuttals. The competent authority may require further technical reports, specialist research or certificates on the characteristics and quality of the products in order to resolve any claims or opposition to recognition of an appellation of origin.
The recognition of an appellation of origin may be opposed by anyone who demonstrates a legitimate interest and he may invoke the prohibitions contained in the law. Accordingly, no appellation of origin may be declared as such if it does not comply with the legal definition, if it is contrary to good morals or to public order, if it is misleading as to the source or characteristics of the product, or if it is a common or generic indication.
[Answer 15: Yes. Legislative Decree No. 823, Peru's Industrial Property Act, establishes that the State may, under bilateral or multilateral agreements, foster recognition abroad of Peruvian appellations of origin and grant, as a matter of reciprocity, protection to foreign appellations of origin by including them in a special section of the Register of Appellations of Origin. Again, under Decision 344 the competent national authority may declare protection of appellations of origin of member countries of the Andean Community. In the case of applications from third countries, protection may be provided, whenever it is allowed under any agreement to which the country is a party or where the third party grants reciprocal treatment.]
[Answer 16: To supplement the reply to question 15 above in regard to appellations of origin not protected in the country of origin, Article 142 of Decision 344 of the Commission of the Cartagena Agreement stipulates that, in the case of recognition of appellations of origin of countries outside the Andean Community, appellations of origin must have been declared as such in their countries of origin. Accordingly, under the terms of Decision 344, in the case of a foreign appellation of origin not recognized or protected in the country of origin, no application for protection can be made in any country of the Andean Community.]
See items 15 and 16.
The period of validity of a declaration of protection of an appellation of origin is determined by whether the conditions that led to the appellation continue to exist, in the opinion of the competent Office, which may declare the period terminated if the conditions have not been maintained. However, interested parties may apply for it again if they consider that the conditions for protection have been restored, without prejudice to administrative appeals provided for in law.
In order for the declaration of protection to remain effective, it is enough to demonstrate that the conditions which led to recognition continue to exist.
Our legislation does not contain any provision whatsoever on the use requirement in order to maintain rights in an appellation of origin.
INDECOPI's Distinguishing Signs Office determines that the conditions which led to recognition of an appellation of origin still exist and ensures that it is properly used.
Unauthorized use of an appellation of origin will be deemed a punishable offence. Moreover, the competent Office is entitled to cancel, ex officio or upon request, the authorization to use an appellation of origin if the appellation is not being used under the terms on which the authorization was issued.
Since the period of validity of a declaration of recognition of an appellation of origin is subject to the continued existence of the relevant conditions, any interested party may apply to the competent Office for it to declare the period of validity terminated; it is sufficient to submit a request with the supporting evidence.
It is possible for the competent authority to declare, ex officio, termination of the protection of an appellation of origin, if it considers that the conditions which led to recognition have not been maintained. Similarly, the competent authority may, ex officio or upon request, declare forfeiture of the authorization to use a protected appellation of origin, after hearing the parties, if it was issued contrary to the law.
Under Legislative Decree No. 823, the Industrial Property Act, the State is the holder of Peruvian appellations of origin and grants authorization to use them, for which reason a person who applies for and secures recognition of protection of an appellation of origin must also request authorization to use it, a procedure that is different from the declaration of protection procedure.
Anyone who meets the requirements set out in the declaration of protection of an appellation of origin can ask to be granted authorization to use it, and the entity responsible for recognition and protection (INDECOPI's Distinguishing Signs Office) verifies whether the requirements pertaining to the geographical area and the quality or characteristics of the product are met, and where appropriate grants authorization.
The only fees involved are the charge for processing the application for authorization to use the appellation. Accordingly, once the authorization is obtained, there is no obligation to pay any additional sum.
Any unauthorized use of a protected appellation of origin is resolved in an infringement procedure. There may also be disputes that an appellation of origin is being used other than under the terms on which the authorization was granted, in which case the method used is the procedure to cancel the authorization for use. The law also covers the possibility of nullifying the authorization, ex officio or upon request, in cases in which the authorization has been granted contrary to the law.
Current domestic regulations do not establish any cancellation or other kind of extinction of an authorization to use an appellation of origin simply because it has not been used. Accordingly, use of the appellation of origin does not figure as a compulsory requirement to maintain the right to utilize it.
Authorization to use an appellation of origin is granted for ten years, which is renewable. If, before expiry of that period, there is any disagreement regarding the viability of continued use, interested parties may use the method of cancellation or nullity (as detailed in reply 39) to terminate authorization.
See items 36 and 37.
[Answer 36. Under Legislative Decree No. 823, the Industrial Property Act, the State is the holder of Peruvian appellations of origin and grants authorization to use them, for which reason a person who applies for and secures recognition of protection of an appellation of origin must also request authorization to use it, a procedure that is different from the declaration of protection procedure.]
[Answer 37: Anyone who meets the requirements set out in the declaration of protection of an appellation of origin can ask to be granted authorization to use it, and the entity responsible for recognition and protection (INDECOPI's Distinguishing Signs Office) verifies whether the requirements pertaining to the geographical area and the quality or characteristics of the product are met, and where appropriate grants authorization.]
The only direct regulation of grandfathered use of an appellation of origin is contained in Article 238 of Legislative Decree No. 823, the Industrial Property Act, which establishes that persons using an appellation of origin before the date on which it was declared shall have a period of one year to apply for authorization to use it.
Peruvian law sets out provisions whereby trademarks are cancelled in the event of a conflict with geographical indications and appellations of origin. The law also specifies a procedure in the event of an infringement of an exclusive right. In such cases, the existence of a better or prior right must be demonstrated.
Peruvian industrial property regulations establish two instances or grounds for the irregistrability of trademarks relating to appellations of origin and, in this connection, for invalidating the registration if it has been granted. The first is that it is not possible to register as trademarks any signs which reproduce or imitate a protected appellation of origin or consist of a national or foreign geographical indication capable of misleading the public as to the products or services to which they apply, or that their use may mislead the public as to the origin, source, qualities or characteristics of the goods for which the trademarks are used. The second is that it is not possible to register as trademarks any signs which may mislead business circles or the public as to the source, nature, method of manufacture, characteristics or qualities or suitability for use of the products or services concerned.
Peruvian legislation provides for specific procedures to defend and protect an appellation of origin. One method is the infringement procedure for unauthorized use of a protected appellation of origin; another is the procedure to cancel and nullify the authorization to use an appellation of origin, and even the rules on unfair competition include some cases which are penalized, such as false indications of source and false appellations of origin.
The State is the right-holder of Peruvian appellations of origin. Protection may also be invoked by legitimized third parties who consider that they have been affected by acts or circumstances which involve a contravention of their right.
The administrative body with jurisdiction over action to enforce the rules on appellations of origin is the INDECOPI Distinguishing Signs Office. The only fees required are the charges for processing the procedures involved.
Peruvian law establishes that a declaration of protection of an appellation of origin shall be published, once only, in the Official Gazette (Diario Oficial El Peruano) and in any other national newspaper.
The criminal law does not contain any specific rule whereby unauthorized use of an appellation of origin is deemed an offence, and therefore it would not be subject to criminal action.
Peru is party, aside from the Cartagena Agreement, which establishes a common regime for the protection of appellations of origin (Decision 344), to the Paris Convention for the Protection of Industrial Property, which contains rules on false indications of source, and to the Interamerican General Convention on Trademark and Trade Protection, concluded in Washington D.C. in 1929, which includes rules on unfair competition and in particular on false indications of geographical origin and source.
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