The Peruvian Trademark Office (INDECOPI) has established a new precedent on trademark notoriety through Resolution No. 0330 of 2024. This precedent indicates that, if five years have passed since the notoriety of a trademark was recognized, the holder must submit updated evidence to prove that the mark is still notorious.
The ruling arose from a complaint by Nike against a third party for attempting to export products with distinctive signs of the Nike trademark. The Examiner determined that Nike was required to provide recent evidence of the notoriety of its marks; however, Nike found it unnecessary to submit new evidence, and the Examiner ruled that it was not appropriate to assess the claimed infringement.
This precedent breaks with the homogeneity maintained by the Andean Community, where trademark notoriety did not have a specific expiration period. Traditionally, the offices recognized prior notoriety as an indication of future notoriety, accepting that this character is not quickly lost. However, this decision introduces a requirement to update notoriety every 5 years.
Some argue that this precedent is excessive, as notorious marks are unlikely to lose their status in 5 years, given that notoriety is built up over decades of market presence, advertising investment and consumer loyalty. Requiring the demonstration of this notoriety every 5 years could be a challenge for brands and their perception in the marketplace.
