Peru (PE)
03-27-2012 (Newsletter Issue 5/12)
Regulation for Registration of Pharma Products
The regulation for the registration, control and sanitary surveillance of pharmaceutical products, medical devices and sanitary products has been approved through Supreme Decree 016-2011-SA, published in official gazette El Peruano on July 27, 2011.
This norm establishes a new authorization regime that covers medical devices, pharmaceutical products, herbal (plant-based) health products, and dietary, galenic and biological products. It also includes pharmacovigillance and surveillance for medical devices (technovigillance), as well as inspection procedures for the sanitary authorities.
This decree encompasses all the aspects related to the products included in the Peruvian law for Pharmaceutical Products, Medical Devices and Sanitary Products (Law 29459). Its provisions will be implemented by the General Directorate of Medicinal Products, Supplies and Drugs Agency (DIGEMID), depending on the Peruvian Ministry of Health.
Law 29459 repealed Chapter III, part of Title II, of Law 26842 (General Law of Health).
This regulation also addresses the use of trademarks concerning pharmaceutical products.
The norm entered into force on January 27, 2012.
Source: Moeller IP Advisors, Buenos Aires, Argentina
07-20-2009 (Newsletter Issue 1/09)
Multi-Class Application Now Possible
Currently, the multi-class system has been established, and it is possible to file multi-class applications.
Trademark application must be published in the official gazette “El Peruano” within a period of 30 working days (previously, this term was 3 months from the date of receipt of the office action).
Legal basis is the Industrial Property Law, in force since Janurary 1st, 1994, and the Andean Pact Decision concerning industrial property, in force since December 1st, 2000.
Peru is a member of the Andean Pact.
According to the Andean Pact agreement, there are common rules in trademark law in all member states of the Andean Pact (Bolivia, Colombia, Ecuador, Peru).
Trademark protection is obtained by registration.
Nice classification
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, colours, combinations or shades of colours, three-dimensional forms, the three dimensional form of a good or its packaging, sound marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, designations of origin, certification marks, trade names and titles of establishment.
The application is filed at the Patent Office (INDECOPI).
Multiple-class applications are possible. Even though one application is possible, the official fees have to be paid for each class.
Foreign applicants need a local agent.
A power of attorney is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 5 to 6 months.
Prior to registration, the trademark application must be published in the official gazette “El Peruano” within a period of 30 working days.
An accelerated registration is possible.
National:
The opposition period is 30 working days from publication date of the application. Oppositions are also possible by owners of trademarks in other member states of the Andean Pact.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
If the trademark has not been used for a continuous period of 3 years in a member state of the Andean Pact, it may be subject to cancellation.
The official fee is approx. EUR 155.00 per class (This does not include publication in the official gazette El Peruano).
Trademark Licence Agreement
There are no special formalities required by Peruvian Industrial Property Regulations regarding private trademark licensing contracts. However, licence agreements should be in writing in order for them to be recorded before the Trademark Office Register. It is permitted to license the use of unregistered trademarks. A licence can be restricted to only some of the goods or services in respect of which the mark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing.
Recordal
There are no provisions in law for the recordal of a licensee with the Trademark Office or other authorities. The recordal of the licence is voluntary. There is no time frame for a recordal and there is no prescribed form or content for a licence agreement.
The following document is required for a recordal:
1. The licence agreement, signed by both parties, duly notarised and apostilled
Effectiveness
The licence becomes effective from the execution date of the agreement between the parties and enforceable against third parties as from the date of recordal with the Trademark Office. It is not required to be published.
Infringement Proceedings
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may not join the proprietor in infringement proceedings. He may also call upon the trademark owner to institute infringement proceedings, but he may not institute infringement proceedings in his own name, even if the proprietor refuses or neglects to do so, unless otherwise provided for in the licence agreement. The licensee is not required to cite the proprietor as co-defendant in any such proceedings.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
260,00 € |
230,00 € |
| Word Mark Search (identical) |
210,00 € |
170,00 € |
| Extended Search (word mark, company name, domain) |
720,00 € |
230,00 € |
| Device Mark Search (availability) |
420,00 € |
290,00 € |
| Trademark Owner Search |
290,00 € |
|
| Company Name Search |
540,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
440,00 € |
410,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
01-05-2012
OMC Abogados & Consultores, Lima, Peru
12-13-2011
Estudio Colmenares, Lima, Peru
Licensing
12-13-2011
Estudio Colmenares, Lima, Peru
OMC Abogados & Consultores, Lima, Peru
Scavia & Scavia, Lima, Peru