Regulation & Law

The way products and services are counterfeited is very different from how things were done a few years ago

Adriana Barrera is the founder of intellectual property boutique, Barlaw. With more than twenty years in the field Adriana heads a firm that is recognized in all IP matters. She is without doubt the best Peruvian lawyer for clients with anti-counterfeiting problems. Adriana shares with us some trends concerning IP protection and comments on recent legal amendments.

Adriana Barrera is the founder of intellectual property boutique, Barlaw. With more than twenty years in the field Adriana heads a firm that is recognized in all IP matters. She is without doubt the best Peruvian lawyer for clients with anti-counterfeiting problems. Adriana shares with us some trends concerning IP protection and comments on recent legal amendments.


Interview with Adriana Barrera, founder,Barlaw

 

Leaders League. Even though you specialize in IP in general, you are the most recognized attorney in enforcement issues in Peru. These issues involve working with the police, customs and others. What’s it like to be a woman working in that environment?

 

 

Adriana Barrera. I get asked this question a lot. I must say that I have never considered that being a woman has been an impediment to performing my work efficiently and obtaining good results. The work I do is not always desk-based, one should be willing to go out, travel and fight cases one by one with passion. I believe that the professional that works with dedication will not find any barrier to doing a good job.

 

Leaders League. How has the anti-piracy strategy of your clients evolved in recent years?

A.B. The strategy of companies has changed a lot in the last few years. I have been advising companies for more than 20 years in the defense of their intellectual property and I have realized that the way their products and services are counterfeited and pirated is very different from how things were done a few years ago. One of the most important differences is that 10 years ago, it was possible to seize containers with a large number of counterfeit goods at the border (customs); we are talking about quantities between 20,000 and 40,000 units. This is no longer the case because the counterfeiters, to evade the law, import in small quantities, they make several imports with minimum amounts; in that way, they try to discourage the rights holder from initiating action given that it is very expensive to take legal action against the importation of small quantities of goods. However, we have tried to develop efficient legal strategies to be able to combat these new tactics.

Another important change is that electronic commerce has grown significantly, and thus, we find cases of counterfeit products that are sold online through social networks, online sales platforms and others.

Therefore, together with the IP rights holders, we have had to change our strategy to defend their trademarks and copyrights. We are constantly monitoring online platforms and we try to fight against smuggling networks and criminal organizations worldwide.

 

Leaders League. What are the main aspects that will be modified in Decision 486 that establishes the Common Industrial Property Regime?

A.B. One of the main proposals is the creation of a special regime for nation branding, which is of great interest to Peru. Likewise, the signatory states have proposed the creation of an Andean platform for registering trademarks and the harmonization of formal examinations in the different countries when applications are identical.

I think that these changes will bring positive results for the trademark registration, as there will be greater interconnection between offices. More precisely, this interconnection will benefit consumers through the unification of criteria and the streamlining of registration procedures.

 

Leaders League. Do you agree with the guidelines issued in 2016 by Indecopi on well-known trademarks? Do you think these guidelines provide clarity and / or stability?

A.B. Many times the rights holders have filed incomplete market surveys or surveys lacking technical specifications, making it very difficult for Indecopi to perform an adequate analysis.

I believe that the establishment of methodological aspects to be included in the market surveys is a great idea. However, we must bear in mind that this does not ensure that the notoriety of the trademark is declared, since the analysis will also be based on other documents and additional information.

 

Leaders League. What is your opinion on the amendments introduced by Legislative Decree No. 1309 which seeks to simplify certain administrative procedures?

A.B. The main purpose of this norm is to simplify procedures before Indecopi. However, like any new law, there will always be, in my opinion, both positive changes and some others that we must evaluate whether they are successful as we go along.

Previously, it was necessary to present powers of attorney for the majority of procedural acts. Now this is only necessary for the renunciation of a registration. This facilitates and streamlines procedures. Likewise, the express incorporation of the objective administrative liability for acts of infringement of industrial property rights is, for example, another asset of the new norm.

However, the requirement to present the certificate of registration when filing an Andean opposition may be seen as a setback; also bearing in mind the very short period allowed for the presentation of said document. Another aspect that we think can be complicated is that now the Administrative Court of Appeals will only resolve contentious procedures, which can harm the parties since the Trademarks Commission and the Inventions and New Technologies Commission, may have different criteria depending on the case.

Anyway, we consider that this new legislative decree has been put on the table to accelerate the processing of files in administrative proceedings, which we believe is a positive thing.

Read the full Special Report: Peru: International Firms Reshaping Legal Market

Peru is considered one of the leading emerging markets in the region in terms of economic development and despite the economic slowdown the prospects are better than in neighboring countries. According to the IMF Peru will grow at a faster rate than Chile, Colombia and Mexico. The recently elected president should provide a basis for this notably through several infrastructure projects that should launch in the coming years.

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