In Peru there are two regulations that forbid the registration of a trade mark when it infringes a copyright owned by a third party. One of these regulations is included in clause (g) of article 130 of the Legislative Decree 823 – Industrial Property Law, and the other is included in clause (f) of article 136 of Decision 486 – Common Regime regarding Industrial Property. These regulations state that the brand names consisting of a sign that may violate the IP rights or copyright of a third party or brand names that consist of titles of literary, artistic or scientific works that are the object of copyright protection may not be registered as trade marks.

Some months ago, both the First Administrative Instance of the Peruvian Trade Mark Office and the Tribunal of the Peruvian Trade Mark Office (Second Administrative Instance) resolved that the name of the famous English heavy metal band Iron Maiden was not protected by copyright so they granted the registration of this name as a trade mark to an unknown third party covering goods in international class 25, namely articles of clothing.

It is very regrettable that the Peruvian Trade Mark Office (INDECOPI) limits copyright in this way, as they did not take into account that the name of this famous group is recalled by consumers to identify and refer to the authors of the songs, and this is an integral part of the respective copyright.

An interpretation like that made by INDECOPI results in the regulations mentioned in the first paragraph of this article becoming nonsensical, since it is obvious that the spirit of these rules is not only to protect the embodiment of a copyright such as a song or a literary work, but also and most importantly to protect the author's name or its pseudonym or the title of a literary work or a song since that is the way that consumers remember the name of a band that composes and plays a song. The regulations, which aim to avoid the registration of a brand name because of the existence of a copyright, lose all sense when they are given a limited protection such as that interpreted by INDECOPI, since it is almost impossible to think that a person or corporation is going to apply for a trade mark that consists of the whole paragraph of a literary wok or a song, when it is logical that the brand names consist of one or very few words as an extensive brand name causes the loss of distinctiveness and it is very hard for consumers to remember. The most important objective of a trade mark is that it is easy to remember, so – as an integral part of a copyright – the title of a song or literary work, etc, as well as the name and/or pseudonym of the band that has composed a song protected by copyright should be protected.

It is no surprise that a person or corporation wishes to use or register such an appellation as a trade mark. Furthermore, if a copyright is registered as a brand name by a third party, this third party will enjoy the advantage of a famous name and consumers will believe the products manufactured or the services rendered that bear this mark belong to the owner of the copyright who therefore obtains without any effort an enormous economic beneft, thanks to the efforts of the true owner.

Finally, it is worth pointing out that INDECOPI´s resolution regarding the appellation Iron Maiden referred to above has been appealed based on a cancellation against the just-granted Iron Maiden trade mark and it is expected the Office will change its decision.

Alain C Delion and Lilie C Delion

Estudio Delion
Las Acacias 898, Urb. Las Palmeras
Los Olivos, Lima 39, Peru
Postal address
PO Box 27-0044, Lima 27, Peru
Tel: +51 1 523 9147 / 522 0360
Fax: +51 1 521 0685
vcd@estudiodelion.com.pe  
www.estudiodelion.com.pe