Nulity action related to utility model patent. Our firm is assisting Dräger Perú in a nullity action initiated by David Alonso Ponce Rodríguez relating to the utility model patent “una máscara repiratoria con módulo electrónico desmontable que adquiere información fiable relacionada a lo habitos y factor de uso de las máscaras durante la jornada laboral”, registered on behalf of Universidad de Lima and Dräger Perú. Counterparty seeks recognition as inventor of utility model: The basis for the nullity is that Mr Ponce seeks to be recognised as the inventor of said utility model, arguing that he had participated in the invention and, as such, should be recognised as the inventor. Utility resulted from project between client and renowned Peruvian university: The utility model was developed within the framework of the project financed by INNOVATE PERU, winner of the Business Innovation Projects Competition presented by Dräger Perú in association with the Universidad de Lima. Mr. Ponce cannot be considered an inventor because he did not come up with a solution to a specific problem but rather fulfilled a commission following the indicated guidelines. Challenging case to maintain patent ownership: This procedure is challenging since it seeks to ensure that the client maintains ownership of the patent without sharing it with another person. Latest development: The Commission declared the nullity action unfounded. Mr Ponce appealed the resolution, and Dräger has responded to the appeal, which is pending.

Representing leading biotech company in trademark opposition and managing large portfolio. We are assisting Andermatt with the necessary measures to protect its trademark portfolio. We are particularly tasked with the registration of the trademark PHOSBAC in class 1, which is subject to opposition from Bedson, owner of the trademark FOSBAC in class 5. Trademarks distinguish different and unrelated products: We argue the trademarks are not similar and will not lead to confusion among consumers, besides the fact that said trademarks distinguish different products that are not related. World leader in biological solutions: Andermatt Group is a Swiss company and a world leader in developing, producing, and distributing biological solutions. It currently markets and sells its products worldwide through its subsidiaries and more than 100 distributors. Essential mark in client’s portfolio: PHOSBAC is an essential trademark for the client and is registered worldwide. Our strategy is to seek the registration of Andermatt’s trademark in Peru or a coexistence agreement, which is quite challenging as the objective is to enable brand registration in Peru. Latest development: We filed the answer to the opposition within the term, and the procedure is pending at the first administrative level. We are also negotiating a coexistence agreement between the parties concerning the trademarks PHOSBAC and FOSBAC.

Trademark oppositions involving major food delivery apps. Our firm is assisting Digital Food against a trademark opposition filed by Rappi based on its trademarks RAPI TURBO and TURBO FRESH in classes 35, 39, and 42. Digital Food filed for the trademark registration of JOKR TURBO and logo in classes 35, 39, 42, and 45 to distinguish between other delivery services. Term commonly used within delivery segment: We are challenging Rappi’s opposition based on the fact that the term TURBO is commonly used to refer to speedy delivery in describing the services offered by both parties. Fast-growing tech company owned by key Peruvian group: Digital Food is a fast-growing Peruvian company belonging to the Intercorp Group, which provides delivery services. Demonstrating term’s non-exclusivity: This case is important and challenging since we must prove that the term TURBO is not exclusive. On the contrary, it is a term that denotes speed and provides a special service, for which we have presented a list of brands that use the term TURBO and are registered in various classes of the international classification, coexisting without any problem. Latest development: We filed the answer to the oppositions and the procedures are pending before the first administrative level.

Trademark opposition in relation to marks distinguishing related services. The firm is advising Explora Chile—a company in the tourism and leisure sector—on a trademark opposition against Centro Educativo Explora and its trademark EXPLORA in class 41 (education services), on the grounds that the trademarks distinguish related services. In addition, the client develops an education and training service for tourist guides, which also corresponds to class 41. Trademark protection encompassing education services: Our work additionally sought to obtain evidence of the use of the EXPLORA activities developed in class 41. Explora Chile, through Explora Valle Sagrado, carries out several activities, including education services. In this sense, the strategy was to define whether Explora Chile would present the opposition or include Explora Valle Sagrado. Ultimately, the decision was that Explora Chile would file the opposition. Pioneer in experiential tourism: Explora Chile is a hotel, lodge, and exploration company that operates in some of the most remote corners of South America. Its goal is to deeply understand and promote the conservation of these territories. With more than 30 years of experience, Explora has established itself as a pioneer in experiential tourism, offering unique exploration activities that differ from conventional tourism. Important case due to brand’s notoriety: In Peru, Explora Chile develops experiential tourism activities in the Sacred Valley, Cusco, through the majority shareholder company Explora Valle Sagrado. Thus, the case is particularly important for the client since the EXPLORA brand is highly recognised in the tourism market. Latest development: The counterparty has not answered the opposition, and the procedure is pending a resolution before the first administrative instance.

Cancellation action due to trademark application’s rejection. Our firm is assisting Off White with a cancellation action following the administrative authority’s resolution that rejected the client’s application to register the trademark «OFF» in class 25, which pertains to clothing and footwear. The trademark was rejected due to the pre-existing trademark OF and the respective design in class 25. Initial favourable decision on lack of trademark use: As a strategy, we initiated the cancellation action due to the lack of use of the trademark OF. Initially, the authority declared the cancellation action founded. However, upon appeal, the administrative court, in an erroneous interpretation, considered the cancellation action unfounded, accepting as proof of use photographs that had no date and receipts for the commercialisation of four products. We then initiated a court action to challenge the administrative resolution. Securing trademark protection for luxury fashion brand: Off-White is an Italian luxury fashion brand founded in 2013 and with manufacturing based in Milan. The brand is recognised for its unique combination of urban style and high fashion, focusing on quality materials and innovative designs. The «OFF» trademark is a significant component of the client’s portfolio, which includes a range of clothing and accessories that reflect contemporary culture. Our work is therefore essential to secure trademark protection for the client in Peru. Latest development: There was an attempt to reach an agreement with the other party; however, it was unsuccessful. The court proceeding is still pending a decision.

Nullity action against confusing trademark and logo. The firm is advising Tinka on a nullity action against the counterparty’s trademark APUESTO.COM and its respective design in class 41, on the basis that it is confusing with the trademark TE APUESTO, owed by the client. Our role is to ensure the authority declares the trademark null and recognises TE APUESTO.COM as a well-known trademark. Leading player in Peruvian gaming market: La Tinka is a Peruvian company specialising in managing games of chance. It is mainly recognised for the Tinka lottery and, more recently, for «Te Apuesto,» a popular sports betting platform. The introduction of «Te Apuesto» has been an important milestone in the client’s history, managing to capture the attention of a diverse public and promoting sustained growth in its market share. Critical case due to diverted consumer interest: This case is very important for the client since the registration of the APUESTO.COM trademark has diverted consumers’ interest, and we must ensure that the trademark is declared null, in addition to the counterparty’s bad faith. Latest development: We are currently waiting for the counterparty to respond to the nullity action.

Oppositions against several filing of several trademarks by pizzeria franchise. The firm is assisting Little Caesar with oppositions against the filing of several trademarks by Pizza Pizza Royalty Limited, as the counterparty is using several trademarks similar to Little Caesar’s such as PZA, PZA and its respective logo in classes 30 and 43. We are particularly advising the client on designing a strategy to defend its renowned trademark PIZZA PIZZA. Bad faith and trademark similarity: Little Caesar is concerned about the expansion of this competitor with trademarks very similar to its own. The main arguments of the oppositions are the similarity of the trademarks in dispute and the bad faith of the applicant. Crucial brand protection against direct competitor: This case has been challenging since the client seeks to protect its brand from its direct competitor, and similar cases have happened in various jurisdictions. This matter is particularly significant as it reflects Little Caesars’ ongoing efforts to maintain its market presence and brand integrity in multiple markets. Renowned US restaurant chain: Little Caesar is a global restaurant chain from Michigan, United States. The business has rapidly expanded through franchising, thus becoming the fastest-growing chain in the US. This resulted in Little Caesar becoming an internationally known brand, along with its famous phrase: PIZZA! PIZZA! It now has a presence on five continents, with a disruptive offer and high-quality products, thus managing to respond to the needs of pizza consumers worldwide. Latest development: The oppositions have been answered. The procedures are pending at the first administrative level.

Infringement action for alleged trade dress and trademark violation. Our firm is representing Class Complement in an infringement action started by Kipling against the client due to alleged trade dress and trademark violation of Kipling’s suitcases and backpacks. We are assisting the client in designing a strategy to defend the right of CREPIER designs in their suitcases and backpacks. Necessary distinction between trade dress and common use elements: We sought to demonstrate lack of trademark misuse and as for the trade dress, it refers to elements of common use used by several competitors, such as the use of the designs of the elements in the trademark located in a circle, circular zippers, and pompoms. It must be considered that the elements indicated as trade dress by Kipling are elements of common use that a single owner cannot appropriate. Major Peruvian player in in luggage and handbag market: Class Complement is a Peruvian company that markets the CREPIER brand, distinguishing class 18 products such as suitcases, briefcases, wallets, etc. As a Peruvian brand that has been constantly evolving for 45 years, its activities are not only national but also international. Challenging case with intricate developments: This case has been challenging and has had several twists and turns, as the administrative court has declared the nullity of the first instance decisions on two occasions. At all times, we have sought to have the authority recognise that a single owner cannot appropriate the generic elements. Several appeals filed by counterparty led to granting of unfair competition claim: The National Institute for the Defence of Competition and the Protection of Intellectual Property (INDECOPI) initially ruled Kipling’s infringement action for improper trademark use as unfounded and deemed the unfair competition claim inadmissible. Kipling appealed, leading to a series of nullifications by the INDECOPI Tribunal, which ultimately found the unfair competition claim valid, arguing that although the elements involved were of common use, they had been used as a whole by Class Complement. Latest development: The case is closed with the imposition of a reduced fine.

Defence against trademark oppositions in footwear industry. Our firm is advising Comercializadora de Calzados y Vestuario Gotta (Gotta) in connection with the registration for the trademark GOTTA, figurative logo, and figurative trademarks in class 25. Vans filed four oppositions based on its trademark VANS, including the V design, in class 25. Lack of confusion among consumers and coexistence of trademarks in other jurisdictions: Our defence arguments are based on the fact the trademarks are not similar and will not lead to confusion among consumers. In addition, different trademarks coexist in the same class, including the V design, and the trademarks coexist in other jurisdictions, such as Chile. All-encompassing legal strategy: We are assisting the client in designing a strategy to protect its trademarks in the Peruvian market while also working on trademark registration. Relevant Chilean company with widely accepted products in Peru: GOTTA is an important Chilean footwear company founded in 1992. In Peru, its shoe designs have been widely accepted by the consumer public, which positions the country as an essential market for Gotta products. Pivotal case for client given suspension in products commercialisation: The client is very interested in the outcome of these oppositions since it suspended the commercialisation of its products until these proceedings are resolved. In this case, we even filed a claim about the delay in the resolution, which was granted by the authority. Latest development: The oppositions have been answered. The procedures are pending at the first administrative level.

Trademark registration for Ivy League university or potential coexistence agreement. Our firm is assisting Princeton University in filing the trademark for PRINCETON UNIVERSITY and its logo in class 41. However, considering the pre-existence of the trademark PRINCETON REVIEW, we are also assessing the possibility of filing a coexistence agreement in class 41 with the clauses required by the Peruvian Trademark Office for the coexistence of the aforementioned marks. Appeal against trademark authority’s resolution: The Peruvian Trademark Office rejected the trademark PRINCETON UNIVERSITY and logo due to the pre-existence of the trademark PRINCETON REVIEW. It did not take into consideration the coexistence agreement. For this reason, we appealed against this resolution so that the Peruvian authority could analyse the coexistence agreement. One of top universities worldwide: Princeton University is a private Ivy League research university in Princeton, New Jersey, and one of the most important Universities in the US. Founded in 1746, it is the fourth-oldest institution of higher education in the United States, and one of the nine colonial colleges chartered before the American Revolution. Renowned for its rigorous academic programmes and commitment to undergraduate teaching, Princeton consistently ranks among the top universities globally. Latest development: Our appeal against the Peruvian Trademark Office is pending a resolution at the second and last administrative level.