Javier is very excited with the forthcoming opening of his restaurant in Surco. As part of his investment, he has remodeled the space for the restaurant operation, has bought furniture for the restaurant, has hired suitable employees and, finally, has obtained all the necessary licenses and, obviously, the operating permit granted by the Municipality.
All invitations have been sent and the opening of the restaurant has been advertised. The name of his restaurant is “Pescados Ricos”.
The day before the opening day he receives a notice from INDECOPI, informing him that he must stop using the restaurant’s brand name immediately because an infringement action has been filed by the owner of the “Pescados Ricos” brand name on grounds that his/her registered brand name was being used without authorization. This brand name had been registered in 2006 with INDECOPI.
What did Javier do wrong?
Javier had heard that he could have his brand name registered with INDECOPI, but could start using it even if it had still not been registered. So he thought that he could use his brand name and that he could have it registered afterwards, once he had the cash available to cover this cost.
The first step that any businessman should take is to have his/her brand name registered with INDECOPI, and this should be done well in advance.
What’s the most valuable thing about PEPSI soft drinks? Their manufacturing plants? The bottles? The company’s experience and know-how?
The most valuable thing about PEPSI soft drinks is the brand name. The brand name, an intangible asset, is the most valuable asset of a company. As long as a brand is not registered, we don’t have any rights to the brand, neither positive nor negative. We cannot prevent third parties from registering the same brand, we cannot file a complaint against third-party registration, we cannot grant use licenses to have our brand name used by third parties, etc.
What do we have to do to avoid Javier’s mistakes? There are 3 simple steps:
First step: have different brand and/or logo options available to identify our products and/or services.
Second step: Conduct a phonetic search at INDECOPI to make sure that the brand that we pretend to register has not been previously registered and/or that it is not in the process of being registered by a third party to identify the same products and/or services that we intend to identify with our brand. If we are also planning to use a logo, then it is also advisable to conduct a phonetic search of logos.
Based on the results of the above searches, we can get an idea of what our chances of success are if we file an application for the registration of our brand and/or logo.
Third step: File an application for the registration of the brand with INDECOPI approximately 1 year in advance. It is a non-contentious proceeding which may last 4 months. If an opposition is filed, its processing could last up to 12 months in the first instance.
If you are reading this article and you are in a similar situation or you are a businessman with good business ideas, don’t forget to protect your business and your ideas by having your brand registered and protecting your intellectual property rights.