Proper Sanction to the Recurrent Offenders - Peru
September 19, 2011 By Estudio Delion SRL
Resolution 1181-TPI/Indecopi, issued on June 6, approved an $82,290 fine for a trademark infringer. This is considered to be a drastic yet justifiable sanction given the nature of the infringer’s illegal conduct.
In this case, the defendant offered, through its website, products bearing a trademark belonging to Estudio Delion client Crane Co., which is based in the US.
Once the infringement complaint was filed, the defendant argued that it was offering legally purchased products. This meant that the case would focus on trademark exhaustion because the defendant argued that Crane could not take any action as the pipes were legitimate products. The defendant pointed to a number of invoices that suggested that its suppliers had legitimately purchased the goods.
The Administrative Court of First Instance of the National Institute for the Defense of Competition and Protection of Intellectual Property (Indecopi) stated that as Crane could not prove that these documents were false, it had to find that the infringement complaint against the defendant was unfounded.
Crane appealed against this decision. Indecopi’s second instance court applied the legal principle that whoever affirms a fact must prove it and said that it was up to the defendant to substantiate its arguments. As the defendant was not able to do so, it was fined to set an example.
The resolution represents a good precedent. It is useful as a lesson to those that repeatedly infringe third-party trademark rights. Before, they could be confident that any infringement charge would result in a relatively low fine, which only encouraged them to continue infringing. With this resolution, Indecopi clearly states that if repeat infringers are caught, their punishments will hit them hard economically, and in a worst-case scenario, an infringer will be bankrupted.
ABOUT THE AUTHOR: Alain and Lilie C. Delion
Estudio Delion is formed by the joint of the traditional experience in Administrative Law and Civil Right of Fayssy C. Delion together with the expert in Patents Lilie C. Delion who belonged to the former firm Compu-Patents S.R.L., having an extensive professional practice in Intellectual Property of more than 26 years.
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More information about Estudio Delion SRL
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
Once the infringement complaint was filed, the defendant argued that it was offering legally purchased products. This meant that the case would focus on trademark exhaustion because the defendant argued that Crane could not take any action as the pipes were legitimate products. The defendant pointed to a number of invoices that suggested that its suppliers had legitimately purchased the goods.
The Administrative Court of First Instance of the National Institute for the Defense of Competition and Protection of Intellectual Property (Indecopi) stated that as Crane could not prove that these documents were false, it had to find that the infringement complaint against the defendant was unfounded.
Crane appealed against this decision. Indecopi’s second instance court applied the legal principle that whoever affirms a fact must prove it and said that it was up to the defendant to substantiate its arguments. As the defendant was not able to do so, it was fined to set an example.
The resolution represents a good precedent. It is useful as a lesson to those that repeatedly infringe third-party trademark rights. Before, they could be confident that any infringement charge would result in a relatively low fine, which only encouraged them to continue infringing. With this resolution, Indecopi clearly states that if repeat infringers are caught, their punishments will hit them hard economically, and in a worst-case scenario, an infringer will be bankrupted.
ABOUT THE AUTHOR: Alain and Lilie C. Delion
Estudio Delion is formed by the joint of the traditional experience in Administrative Law and Civil Right of Fayssy C. Delion together with the expert in Patents Lilie C. Delion who belonged to the former firm Compu-Patents S.R.L., having an extensive professional practice in Intellectual Property of more than 26 years.
Copyright Estudio Delion SRL
More information about Estudio Delion SRL
View all articles published by Estudio Delion SRL
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
