Giovana Palacios and Adriana Barrera of BARLAW-Barrera & Asociados highlight the key features of the Singapore Treaty on the Law of Trademarks, picking out existing and new features that would benefit brand owners interested in Peru and Latin America
On September 27 2018 WIPO announced Peru’s accession to the Singapore Treaty on the Law of Trademarks. Peru is the first Latin American country to ratify the treaty. The treaty simplifies and standardizes administrative procedures for trade mark registration. The procedures covered by the treaty include filing of applications, the division of applications or registrations, recording of licenses, and changes to trade mark office record such as ownership and name. WIPO has a useful Q&A sheet here
Below we pick out five features of the treaty, three of which already exist in Peru. It important to note that the treaty is not yet in force. The effective date will be as soon as the Ministry of Foreign Affairs publishes it in the official gazette.
The first one is the non-mandatory nature of the registration of licenses, which has been applied in Peru since 2008 due to the Andean Decision No. 689. This regulation makes it optional to register a license agreement in order to use a trade mark.
The second is the ability to file multi-class applications, which is already available because of the Andean Decision. Third, the treaty establishes that Office communications can be in hard copy or electronic format. There are already technological developments at the Peruvian IP Office. These existing features speak quite well of the legislative advances in IP in Peru.
The treaty allows for the registrability of new types of trade marks such as holograms, animated marks, colour marks and other unconventional marks such as sound and taste marks. The treaty says that it will be only applied to all trade marks that can be registered according to the legislation of the Contracting Parties.
In Peru, we follow the regulations of the Andean Community and, at the present time, the Andean Decision does not recognize holograms, animated marks and colour marks. We hope that the ratification of this treaty will bring into discussion the registrability of these new types of trade marks because more entrepreneurs and businesses are interested in registering such marks. It is well known that the Peruvian IP Office is a pioneer in Latin America for IP so it would not be surprising if the Office brought this to the Andean Community as a market need because of the Singapore Treaty.
Grace period for applicants
The treaty gives applicants another opportunity to take the required action in the event they fail to meet deadlines. The availability of this relief measure is an important, positive change for IP owners and their representatives because they would not face the inconveniences in the Andean Law.
A welcome development
Taking together, Peru’s accession will be welcomed by trade mark owners and their representatives. The Peruvian IP Office (INDECOPI) President Ivo Gagliuffi Piercechi said: “We are very pleased to ratify the treaty of Singapore because it will simplify the lives of our trade mark owners....Our main objective is to increase the number of registrations and also to capture new investments to our country.”