Intellectual Property enforcement and border measures are important to detect those foreign trade operations in which the rights of intellectual property are violated.
Generally well-known trademarks are those which have such a great reputation that, upon registration pursuant to local law (and regardless of the country or class), they are officially recognized for protection and distinction worldwide.
Public authorities and members of the private sector have assumed the great challenge of ensuring the recognition of Intellectual Property Rights by improving the IP legal framework in Andean countries. There is an obligation of members of the Andean Community to introduce border measures for the protection of intellectual property rights.
Specifically, for Peru, and as a part of the enforcement of the Trade Promotion Agreement entered between Peru and The United States in 2008, the Legislative Decree number 1092, and its regulation (Supreme decree No. 003-2009) entered into force on the 1st of February 2009, approving border measures for the protection of copyrights or related rights and trademark rights, including well-known trademarks.
The precautionary measures available to enforce well-known trademarks in Peru are immobilization, seizure or withholding of the merchandise.
Such border control measures can be initiated by a citizen, a legal entity or the customs administration. Peruvian customs are able to perform spontaneous inspections of goods if they have reasonable grounds that are counterfeited or pirated and cannot be held liable for any damage to inspected goods.
When requesting protection at the borders, the petitioner will be required by the customs administration to deposit a bond to cover possible losses or damages caused to the importer, exporter, and/ or consignee of the goods resulting from any suspension of the release of non-infringement goods. This bond must be a sum equivalent to 20% of Free on Board (FOB) value of the goods. In the case of perishable goods, the guarantee shall be constituted by 100% of the FOB value of it. Merchandise under US$ 200 FOB value will not be affected.
In order to verify the ownership of the relevant goods and for them to clear customs, trademark owners (directly or through their legal representatives or agents) must be registered in an official database kept by the customs administration, who will liaise with the Peruvian Trademark Office (INDECOPI) for the purpose of registering rights holders.
There is a recent case of the mark ANGRY BIRD, which is a well-known trademark owned by the firm ROVIO INTERTAINMENT LTD. Due to the success of this mark and its products and services involved, many persons are trying to introduce and sell counterfeited products bearing this mark in Peru. The amount of goods entering the Peruvian market is so big, that the owner is constantly summoned to appear before the Judiciary. Also police and judicial notifications are received to confirm the trial initiated ex-officio by the Public attorney. As most products are made abroad and imported to our country, it is not possible to find the factory of these knock-offs that infringe the owners IP rights; consequently the only way to stop these infringement is through Peruvian customs, which, by the way, is making an excellent job.
The process seeks to be brief. If the accused has been caught in the infringement act, or has confessed the commission of the infringement, or the elements of conviction are sufficient and evident, the Public Ministry starts the criminal process and promotes the application of the principle of opportunity (Principio de oportunidad) which is intended to reach an agreement between both parties to compensate for damages and losses that have been incurred. Another requirement to apply for this principle is when the damage caused does not have a significant impact on consumers and the penalty to be imposed is minimal.
These border measures are very important to avoid that third parties exploit the prestige of the well-known trademark, with low quality products and also for consumer protection.
Source: Oscar Mago– IP Lawyer at OMC Abogados & Consultores, Peru
