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Peru - Trademark Dilution

A recent decision of the Administrative Court of Indecopi denied registration of several trademarks on the ground that such registrations would "dilute by association" a prior trademark and trade name of the opposer.

YPF S.A. filed numerous applications for trademarks that included the word MOVIL. Mobil Oil Corporation opposed these applications, on the basis of their prior rights in the MOBIL trademark and trade name. The Trademark Office upheld the oppositions, whereupon YPF appealed two of the decisions. On appeal, the Administrative Court upheld the decisions of the Trademark Office on the ground that allowing registration of trademarks containing the word MOVIL could dilute by association the distinctive value of the MOBIL trademark and trade name.

Neither the Trademark Office nor the Administrative Court has previously used the theory of dilution to deny registration of a trademark. Although administrative decisions are not binding precedent, they do have persuasive effect, and this decision may assist in determining the ambit of protection afforded to other well-known marks in Peru.

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