Defence against multiple trademark oppositions in pharmaceutical sector. We are assisting Apitoria Pharma Private against trademark oppositions filed by Apiter regarding the trademark APITORIA and its logo in class 5. The counterparty is a pharmaceutical company specialising in natural products and filed these oppositions based on its three trademarks APITER, APITER PROPOLEO-D, and APIFORT APITER, and its respective logos in class 5. Lack of confusion among consumers and coexistence of trademarks: Our arguments of defence are: i) the trademarks are not similar and do not lead to confusion among consumers and ii) different trademarks coexist in the class including with the prefix API, in class 5. Prominent name in international pharmaceutical landscape: Apitoria is an Indian pharmaceutical company and wholly owned subsidiary of Aurobindo Pharma Limited. It is a prominent player in the pharma industry, particularly in the production of active pharmaceutical ingredients (APIs). As a leading generic API company, Apitoria has a significant share of the international pharmaceutical market. Controversial arguments by counterparty: The relevance of this case lies in the implications it holds for Apitoria’s trademark rights and market positioning. Surprisingly, the counterparty used the term API, commonly used in class 5, as a defence argument against an action for the nullity of its trademark that is currently pending while filing an opposition challenging the use of the very term by our client. Latest development: We filed the answer to the opposition within the deadline, and the procedure is pending resolution at the first administrative level.

Trademark opposition against identical mark and bad faith. Our firm advised Tempo Livre on an opposition against the trademark CARIUMA PERU and its logo in class 25, on the grounds it is identical to the client’s trademark CARIUMA also in class 25. In addition, we sought to demonstrate CARIUMA is a well-known trademark in Peru and that the opposing party was acting in bad faith. Well-known footwear company focused on sustainability: CARIUMA is a company dedicated to manufacturing and marketing sneakers, offering its products in various countries, including the United States. The brand is recognised for its commitment to sustainability and ethical practices in its supply chain, positioning itself as a pioneer in the modern sneaker market. Complex legal issues stemming from highly relevant matter for client: This case is important because Tempo Livre did not register its trademark in Peru or any country within the Andean Community. Therefore, the opposition is based on bad faith and notoriety of the CARIUMA trademark, which are difficult arguments to substantiate. The counterparty did not respond to the opposition and the Commission declared that the applicant sought registration in bad faith. Latest development: We are currently waiting for the appeal period to expire to conclude the procedure.

Defence against trademark oppositions brought by tech giant. Our firm is representing Suol Innovation in trademark oppositions filed by Huawei Technologies in relation to the client’s INVISION trademarks and logos in classes 9, 35, 36, and 41. Huawei filed oppositions based on its trademarks HUAWEI VISION and HUAWEI VISION GLASS in class 9. Lack of trademark similarity and coexistence between trademarks: Our defence arguments are based on the fact i) the trademarks are not similar and do not lead to confusion among consumers, ii) different trademarks coexist in the class, including the term VISION, and iii) the trademarks coexist in other jurisdictions. Innovative programme to challenge unjust allocation of resources in several areas: Suol Innovation is a Cyprus-based company that has developed the INVISION programme to challenge the unjust allocation of resources in education, creative industries, startups, and sports by making these areas accessible to everyone. Therefore, the client needs to obtain the trademark registration in Peru so as to ensure the company’s expansion and facilitate potential partnerships. Combating monopoly over common term: In this case, Huawei has opposed all the classes’ applications, considering that it has a monopoly on the name VISION and hinders the registration of the trademark even though the name VISION is a common term for classes 9, 35, 36, and 41. Our role is essential to help the client design a legal strategy to defend its trademark in Peru and seek trademark registration. Latest development: We have answered the oppositions within the deadline, and the procedure is pending a resolution in the first administrative instance.

Trademark opposition due to similarity and confusion. Our firm is advising Orizon on filing an opposition against the trademark SAN JOSE, registered by the counterparty in class 29, in relation to the SAN JOSE trademark registered in Peru in class 29 by the client. We argue these trademarks are identical and cover identical products; consequently, the counterparty’s trademark is similar and confusing. Cancellation action due to alleged trademark non-use: As a defensive argument, Panificadora San Jose started a cancellation action for lack of use of trademark SAN JOSE, arguing that this trademark has not been used by Orizon in Peru or any other Andean country. Robust strategy on two work fronts: Therefore, we are assisting the client by designing a robust strategy to defend Orizon’s trademark in Peru concerning two work fronts. The opposition and cancellation action due to lack of use have been answered, and the corresponding evidence has been presented to prove the trademark use in Peru and Colombia. Major fishing company with strong presence in South America: Orizon is a Chilean fishing company that specialises in producing certified and traceable seafood products for human consumption and industrial use. With a long-standing history, it is part of the Copec Group, which is one of the largest business conglomerates in South America. Orizon carries out activities across Chile and the Andean Community, including Peru and Colombia. Clarifying potential consequences of trademark opposition: The case at hand highlights the importance of clarifying for the client the potential consequences of trademark opposition, which could result in trademark cancellation. Latest development: The procedure is pending resolution in the first administrative instance.

International patent application for mining equipment. Our firm is assisting Tumi Contratistas Mineros with the patent application for the international patent Autonomous Drilling Machine for the Construction of Service Shafts and Open Shafts. We are responsible for entering the patent into the national phase in Chile, Mexico, Australia, and Canada. Coordinated work with counsels in other jurisdictions: After obtaining the patent in Peru, we sought that it be granted through the Patent Prosecution Highway (PPH) in the aforementioned jurisdictions. This involved detailed work with the correspondents in these countries since the claims had to comply with the legislation in each country. Thus, we managed to have the patents granted in Chile, Australia, and Canada. Patent application pending only in Mexico: In Mexico, we are still waiting for the authority to resolve the examiner’s third observation so that the patent application can be granted. Key player in mining equipment manufacturing industry: Tumi Contratistas Mineros is a Peruvian company that benefits from U.S. capital investment. Its core focus revolves around the manufacturing of mining equipment. The company has undertaken the process of securing international patent protection, a pursuit that we have successfully extended to jurisdictions such as Chile, Canada, Australia, and Mexico. Challenging case involving Patent Prosecution Highway mechanism: The main challenge concerning this case is to obtain the patent through the PPH process, which is a set of initiatives intended to speed up the process of obtaining patents by exchanging data throughout certain patent offices. Latest development: We continue assisting the client with this matter.

Trademark opposition to protect important pisco brand. Our firm is advising Viña Tacama on a trademark opposition against the trademark MAGICO DE LOS ANDES— registered by the counterparty in class 33. We are assisting the client by designing a strategy for defending its brand DEMONIO DE LOS ANDES, an important pisco brand (denomination of origin). Similarity between trademarks and notoriety of client’s brand: The opposition’s arguments are i) the similarity of the idea MAGICO/DEMONIO DE LOS ANDES, ii) the notoriety of the trademark DEMONIO DE LOS ANDES, and iii) the applicant’s bad faith. So far, our involvement in this case has been crucial since we obtained the recognition of the DEMONIO DE LOS ANDES brand as well-known. Appeal to administrative court: The National Institute for the Defence of Competition and the Protection of Intellectual Property (INDECOPI) declared the opposition unfounded. We appealed, and the administrative court recognised the trademark DEMONIO DE LOS ANDES as well-known and requested that the Commission re-analyse the trademarks in dispute, considering the argument of notoriety. The Commission declared the opposition unfounded. Prestigious Peruvian business attending markets worldwide: Viña Tacama is known for its wines, sparkling wines, and piscos. Its main business is the cultivation of fruit and the production of wines. Over the years, Tacama, particularly the DEMONIO DE LOS ANDES pisco, has received prestigious international awards: invaluable prizes for its renowned quality, the fruit of knowledge, experience, and technology. Tacama remains internationally up to date with the highest industry standards, thus reinforcing its position in Peru and the most demanding international markets. Latest development: Our firm appealed, and the procedure is pending a resolution in the second instance.

Cancellation action over alleged lack of trademark use in Peru. Our firm is assisting Garmin Switzerland GmbH in a cancellation action brought by Xfusion Digital Technologies against the trademark FUSION, registered in Peru in class 9. The counterparty alleges that the trademark has not been used in Peru or any country of the Andean Community. Therefore, our work consists of gathering evidence to prove the use of the FUSION trademark in class 9. Leading multinational player in technology industry: Garmin Switzerland GmbH is a subsidiary of Garmin Ltd., a multinational technology company known for its innovative GPS technology and wearable devices. The Swiss group has established itself as a leader in various markets, including automotive, aviation, marine, outdoor, and fitness. Important brand in client’s portfolio at stake: This case is challenging because the cancellation action refers to the FUSION brand, related to marine activities, and is a significant part of Garmin’s portfolio. Latest development: We filed the answer to the cancellation action and submitted evidence to show the use of the FUSION trademark in Peru. The procedure is pending resolution at the first administrative level.

Nullity action and oppositions against trademark in food sector. Our firm is assisting Productos Minerva—a traditional coffee brand—in a nullity action against the trademark MINERVA FOOD—related to an exporter of fresh meat and derivatives—and its respective logo in class 29, as well as in oppositions against the same trademark in classes 30 and 35. Arguments on trademark confusion: We argued that Productos Minerva is the holder of the trademark MINERVA, which is a well-recognised coffee brand in the Ecuadorian market. This trademark is (i) similar to and confusing with MINERVA FOOD registered in class 29 in Peru and (ii) identical to and confusing with MINERVA FOOD in classes 30 and 35. Comprehensive legal strategy for IP protection: We are assisting the client in designing a strategy to consolidate its rights in Peru. This work therefore includes bringing a nullity action, filing oppositions, and filing its trademark registrations before the National Institute for the Defence of Competition and the Protection of Intellectual Property (INDECOPI). It is worth mentioning this procedure has also been filed in other jurisdictions in Latin America. Traditional Ecuatorian family-owned business: Productos Minerva is a family-owned business with a successful pathway in Ecuador, known for its production and commercialisation of roasted and ground coffee and its derivatives. The company was founded in 1963 and, in the last 60 years, has become an important part of the Ecuadorian and Andean market culture. With wide experience in the production and distribution process related to coffee, Productos Minerva is a leader in this category. Challenging case involving two major players with recognised rights: Therefore, this is a challenging case since we must defend our client’s rights against another company that also has recognised rights within the food industry, albeit in different categories. The competent authority will which trademark registration is prevailing under Peruvian intellectual property regulations. Latest development: The oppositions and nullity action have been answered by the counterparty and the procedures are pending at the first administrative level.

Representing multinational pharma company in trademark oppositions. Our firm is assisting Eugia Pharma with trademark oppositions filed by Mega Lifesciences and Neolpharma Perú regarding the client’s pharmaceutical products. Our work comprises designing a strategy to defend the client’s trademark EUGIA in Peru and seek trademark registration. Pharmaceutical products belonging to different drug categories: Mega Lifesciences filed an opposition concerning its trademarks EUGICA and EUGICA HERBAL INFUSION—which refer to nutritional supplements and herbal remedies—, registered in class 5 (pharmaceutical products), against the client’s trademark EUGIA—related to an injectable drug. Neolpharma, in turn, filed an opposition based on its trademark ZEUGIAL —a medication for the treatment of neuropathic disease. Demonstrating coexistence of brands and lack of confusion among consumers: Our defence arguments consist of demonstrating i) the trademarks are not similar and will not lead to confusion among consumers and ii) different trademarks coexist in the same class, including the term EUGICA. They could coexist with the term EUGIA in their composition, such as ZEUGIAL, NEUGINA, LEUGINASA, and EUGERIAL trademarks, which are owned by different trademark holders. Pharmaceutical group with strong presence in over 100 markets worldwide: Eugia is an India-based pharmaceutical company that provides affordable and accessible specialised products, including general injectables, oncology medications, ophthalmics, and hormonal products. With a strong presence in more than 120 countries, it has over 250 globally approved generics focused on enhancing healthcare outcomes. Essential role in ensuring trademark protection for globally renowned brand: This is a crucial case for the client as it relates to its globally recognised EUGIA brand. Our role is to ensure brand integrity, which is vital for patient safety and trust in medication efficacy. Latest development: The Peruvian Trademark Office issued resolutions determining that both Mega Lifesciences’ and Neolpharma’s opposition are unfounded. Neolpharma Perú appealed and the procedure is pending.