What are the causes of counterfeiting and piracy in Peru?
Factors that enable this wide-spread infringement and undermine enforcement measures include: limited resources and training of customs, police, and INDECOPI officials, limited public awareness as to the economic and social damages caused by IP infringement, corruption among customs and police, and Peru’s heavily burdened judiciary.
Which are the goods that most often face counterfeiting and piracy in Peru?
In many industries, piracy and counterfeiting of products approach levels greater than 90%. This widespread piracy in areas such as digital duplication, illegal copying, and the manufacturing of fake goods has all forced out many legitimate businesses.
Does Peru have a well-established framework for the enforcement of Intellectual Property Rights (IPRs)?
What are the specific laws/orders/rules laid down in Peru for the enforcement of Intellectual Property Rights?
The laws are as follows:
Copyright: Legislative Decree 822- Copyright Law (Decreeto Legislativo 822- Ley Sobre El Derecho de Autor) Andean Community Decision 351- Common Provisions on Copyright and Neighboring Rights (El RégimenComúnsobreDerecho de Autor y DerechosConexos 351) Law No. 28086: Law of the Democratization of the Book and the Development of Reading Law No. 28289: Amendments to Articles 217, 218, and 219 of the Criminal Code Law No. 28571: Amendments to Articles 188 and 189 of Legislative Degree 822 (Ley Que Modifica Los Artículos188º Y 189º Del Decreto Legislativo Nº 822) Government Software Legalization Decree- (Decreto Supremo No. 013-2003-PCM).
Trademarks: Legislative Decree 823- Industrial Property Law (Decreto Legislativo 823- ley de propiedad industrial) (April 1996) Andean Community Decision 291-Common Treatment of Foreign Capital and Trademarks, Patents, Licenses, y Privileges (Decisión 291- RégimenComún de Tratamiento a los CapitalesExtranjeros y sobreMarcas, Patentes, Licencias y Regalías) (March 1991) Andean Community Decision 351 Andean Community Decision 486 - Common Regimen Concerning Industrial Property (Decisión 486- RégimenComúnsobrePropiedad Industrial).
Patents: Legislative Decree 823 - Industrial Property Law (Decreto Legislativo 823- ley de propiedad industrial) (April 1996) Andean Community Decision 291-Common Treatment of Foreign Capital and Trademarks, Patents, Licenses, y Privileges (Decisión 291- RégimenComún de Tratamiento a los CapitalesExtranjeros y sobreMarcas, Patentes, Licencias y Regalías.) (March 1991) Andean Community Decision 344 Common Protection of the rights of different Vegetable Varieties (Decisión 345- RégimenComún de Protección a los derechos de los Obtentores de VariedadesVegetales) Andean Community Decision 486- Common Regimen Concerning Industrial Property (Decisión 486- RégimenComúnsobrePropiedad Industrial).
Trade Secret: Law 26122; Legislative Decree 823; TRIPS Article 39.2, WIPO: Trade Secrets are Golden Nuggets: Protect Them.
What are the different types of IPRs protected by IPR enforcement in Peru?
Copyright, trademarks, patents, trade secrets are the different types of IPRs protected by IPR enforcement in Peru.
What are the general IPR enforcement obligations in Peru?
What are the essential to-dos before an IP rights holder initiates the enforcement proceedings?
If you discover that your trademark is being infringed, do something immediately to protect and enforce your rights. Investigations, raids, seizures as well as civil litigation and criminal prosecutions are some of the tools available. Before deciding which tools to use, you should ask yourself the following preliminary questions:
Is the trademark registered or otherwise capable of being protected in Peru?
Is the harm caused in Peru or overseas?
Who is the source of the harm caused – competitors, employees, agents, or contractors?
Is there any limitation period for filing an infringement action?
Yes - The right to action for infringement shall lapse after 02 years counted from the date the owner learned about the infringement or in any case 05 years after the infringement was committed for the last time.
Which of the following IPR enforcement channels is/are available in Peru?
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
Are civil actions available for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in civil litigation?
Which of the following types of civil remedies is/are available in Peru?
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Are there any other civil remedies available in Peru than the ones mentioned above? If yes, then kindly explain in brief.
What is the approximate timeline of civil litigation related to IPR enforcement in Peru?
A typical time frame for an infringement or dilution proceeding would be 09 months before the Commission of Distinctive Signs (first administrative instance). If the decision is appealed before the second instance, a final resolution could be expected within a 07-month term. Typically, the final decision is not impugned before the judiciary. If the cautionary measure (preliminary injunction) is accepted by the Trademark Office, it will be kept until the issuance of a resolution, which may be appealed. If the final decision declares the infringement action well founded, the preliminary injunction will be final, and the plaintiff will decide whether the immobilised goods should be destroyed or donated.
What happens if an IP rights holder abuses the enforcement measures in civil litigation?
Are there any disadvantages of civil litigation in Peru? If yes, then kindly give 2-3 points?
Is criminal prosecution available in Peru for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in criminal prosecution?
Which is the responsible authority in Peru corresponding to the types of criminal remedies available? Also, mention the imprisonment term and the monetary fine.
A) Responsible Authority - Criminal Court
B) Imprisonment Term - Copyright: between 02 and 08 years; Trademarks: not less than 02 and not more than 05 years
C) Monetary Fine - Copyright infringement is punishable with indemnification fines between 30 and 120 an average day’s wage; Trademarks: 60 to 365 days fine
Are there any other criminal remedies available in Peru than the ones mentioned above? If yes, then kindly explain in brief.
The court may pass an order to prevent the guilty party to not to work in the same field where the infringement occurred for 01 year after they finish their incarceration.
What happens if an IP rights holder abuses the enforcement measures in criminal prosecution?
Are there any disadvantages of criminal prosecution in Peru? If yes, then kindly give 2-3 points?
Usually, the judiciary always suspends the imprisonment sentences of guilty infringers; therefore, the element of deterrent effect on infringers is not met out to prevent further damages.
Are there any alternative dispute resolution mechanisms which allow parties to resolve their dispute out of court?
In Peru, the usual and effective alternative method to dispute resolution is an amicable settlement. The PTO, the Civil Courts, and the Criminal Courts allow and encourage parties to reach settlements that bring the dispute to a close.
Parties can always have an extra judicial agreement, which can be presented before the authority at any time during the case to stop the dispute. Most of the time, this agreement involves payment of professional fees and expenses, a penalty, in case of future infringements, and a decision regarding the destination of the goods seized.
The main legislations regarding alternative dispute resolution, focusing on conciliation and arbitration processes, are as follows:
The Law 26872 (the Conciliation Law);
The Supreme Decree 004-2005-JUS (which regulates the Conciliation Law); and
The Legislative Decree 1071 (which regulates arbitration).
However, this legislation is not commonly used to solve disputes related to intellectual property.
Are border control measures (customs) available in Peru for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to the customs authority/department to support his claims of infringement against the opposing party/importer of counterfeit goods?
What are the remedies available under border control measures (customs) in Peru?
The remedies available under border control measures (customs) in Peru include seizure and destruction of goods.
Who must bear the costs of customs intervention during enforcement?
The applicant must bear the costs of customs intervention during enforcement.
What happens if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs?
If an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs, the Customs may restrain themselves from acting in pursuit of safeguarding the interest of the rights holder.
Which are the best practices for enforcement of IPRs in Peru?
Administrative and Court Proceedings
Are there any risks involved in the enforcement of IPRs in Peru? If yes, then kindly give 2-3 points.
There is no risk involved in the enforcement of IPRs in Peru due to the following reasons:
Peruvian courts are efficient in handing a decision within an acceptable time-frame: an average of 04 working days for the adoption of preliminary injunctions and an average of 108 working days for the issuance of the final decision in the same year).
Decisions taken by Peruvian courts are of high quality and sound logic: in the light of the very high ration of decisions confirmed in second instance.
The number of inspections carried out against alleged infringers upon request of the rights holder has markedly increased.