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October 15, 2015 Vol. 70 No. 18 Back to Bulletin Main Page

PERU: Adidas’s “Three Stripes” Device Mark Protected Under Secondary Meaning Doctrine

On May 18, 2015, the Board of Appeals of the Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (INDECOPI) granted the registration of Adidas AG’s device mark THREE STRIPES in Class 25 on the grounds of acquired distinctiveness (secondary meaning). In doing so, the Board overturned INDECOPI’s first instance decision, which rejected the mark due to lack of distinctiveness.

This is the first case of an applicant successfully proving acquired distinctiveness (secondary meaning) before the Board since 2013, according to an analysis of Board decisions on this issue between 2013 and 2015.
The secondary meaning doctrine is regulated in Peru and the other member states of the Andean Community by the second paragraph of article N° 135 of Andean Community Trade-mark Law (Decision Nº 486 – Common Regime on Industrial Property).

The standards of proof set by INDECOPI for assessing secondary meaning rights are based on the mark’s constant and real use in the market on a long term basis and also on the public’s recognition of the mark as being distinctive of the applicant’s goods or services and indicative of its corporate origin.

For purposes of evidencing constant and real use in the market, invoices constitute a quintessential piece of evidence. Data relating to the sales turnover and additional information regarding the market share are also useful, provided that these expressly refer to the country in which the trademark application has been filed. Advertising material and information regarding advertising costs can help to complement the evidence provided by the invoices, but a market research study is the most typical type of evidence required.

In the Adidas case discussed here, the company made a tremendous effort to meet the standards of proof set by Peruvian trademark authorities in the terms outlined above. These efforts resulted in a favorable finding of secondary meaning of the three stripes device mark.

This will have a favorable impact for trademark owners, as the Board’s decision reinforces the possibility of obtaining trademark protection by means of proving the acquired distinctiveness (secondary meaning) of a mark.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association