News of the Trademark Office: “Requirements that Coexistence Agreements need to fullfill”

The Tribunal of the Peruvian Trademark Office issued Resolution No. 4665-2014/TPI-Indecopi on December 15, 2014, published in the Official Gazette El Peruano in February 11, 2015. In said Resolution the Trademark Office details the conditions that the Coexistence Agreements have to fulfill so that they are evaluated and likely accepted.

Below, we have translated into English said conditions:

“Trademark Coexistence Agreements shall be valid and binding on the parties involved as far as they do not violate mandatory rules, such as those of the law of competition or of consumers’ defense regarding practices which may induce them to wrongful information.

In this sense, to effects of minimizing possible risks of confusion between two or more signs, the Tribunal of the Peruvian Trademark Office considers that the coexistence agreements signed must meet minimum conditions so that they are likely to be accepted by the Authority.

The trademark coexistence agreements may contain provisions of different nature representing the will of the parties; indeed, they can define the territory of use of the respective marks (agreements of territorial delimitation), the range of products and/ or services applied to each mark (agreements of delimitation of products and/ or services) or the marks’ presentation itself (agreements of delimitation of the form of marks)

Indeed, for the content of the coexistence agreements to be viable they must contain measures and provisions destined to reduce the risk of confusion among consumers in relation to the origin of the goods or services concerned.

In that sense the Room Specializing in Intellectual Property states that for a Trademark Coexistence Agreement to be likely to reduce the maximum possible risk of confusion among consumers related with the origin of the goods and services it must contain certain minimum conditions:

a) Information on signs covered by the agreement, consigning the word and figurative elements that make them up and also the products and services that are referred to these signs (as they are registered and / or applied for).

b) Delimitation of the territorial scope within which the agreement applies.

c) Delimitation of the products and / or services to which the marks subject of the coexistence agreement will be restricted in the market. For this purpose, it is necessary that the parties request the effective limitation of the products and / or services in the respective registrations and applications.

d) Delimitation of form of use and / or presentation of signs.

e) State the consequences in case of breach of the agreement.

f) Establish mechanisms for resolution of disputes if any disputed matter arises between the parties.

Based on this, the agreements that do not contain the minimum conditions set above, will not be accepted by the Administrative Authority; however, this does not determine that agreements containing such minimum conditions will be automatically approved, as the Authority will assess whether what was agreed upon by the parties comply or not with the aim pursed by the agreement.