As part of the MARQUES Regulatory Team’s focus on brand restrictions, Maria del Carmen Alvarado and Daniela Supo discuss some recent case studies in Peru.

Trade marks are far more than just logos or symbols – they are the essence of a brand’s identity, a bridge between consumers and the products they trust. In Peru, as in many parts of the world, this vital connection is being reshaped by stringent regulations aimed at promoting public health.

However, these brand restrictions, while well-intentioned, come with a cost: they challenge the very foundation of trade mark rights by curtailing how companies can express their uniqueness and value. As industries such as tobacco, pharmaceuticals, and food products grapple with increasing limitations on their use of trade marks, it raises a critical question: How far can regulation go before it starts eroding the power of brands to compete and thrive in the marketplace?

This analysis delves into the impact of Peru's brand restrictions, examining the fine line between public interest and the protection of intellectual property rights.

General considerations on brand restrictions

Brand restrictions encompass regulatory measures that limit the use of trade marks, including plain packaging, prohibitions on specific brand elements, and mandatory health warnings.

Although these measures are often introduced to promote public health, they also significantly restrict the ability of businesses to differentiate their products and communicate their brand values to consumers.

Empirical evidence from around the world suggests that the effectiveness of such restrictions is mixed. For instance, Australia’s plain packaging law for tobacco, which aimed to reduce smoking rates by removing brand identity from cigarette packs, has led to unintended consequences such as a rise in counterfeit products.

Similarly, in Peru, the introduction of brand restrictions has created new challenges for businesses, particularly in sectors such as tobacco, pharmaceuticals, and food.

Case study: processed foods and beverages

Peru’s Law on the Promotion of Healthy Nutrition for Children and Adolescents (Law No. 30021) introduces a series of restrictions on food advertising aimed at minors, particularly targeting processed food and non-alcoholic beverages high in sugar, fat or salt, with the goal of promoting healthier eating habits among individuals under 16 years old.

Specifically, Article 8 of the law prohibits advertisements that use visuals, characters, or messages likely to attract children under 16 or imply benefits such as enhanced strength, popularity or superiority.

For example, the use of colourful or animated characters often seen in children’s food packaging is restricted if they convey such messages. Additionally, advertisements that create misleading associations, such as suggesting that the consumption of a product provides health or social benefits, are also prohibited.

Prohibition on characters and visuals

The law explicitly prohibits the use of animated characters, both real and fictional, in advertising aimed at children under 16 if these elements suggest strength, popularity or superiority. Companies that incorporate such characters into their trade marks are significantly restricted in how they can market their products.

In Resolution No. 104-2019/CCD-INDECOPI (25 June 2019), the advertising of a powdered beverage featuring an animated character dressed as a superhero and holding the prepared product with a caption at the top stating "activate your power" was sanctioned.

The Commission for the Supervision of Unfair Competition (CCD) ruled that the imagery and wording promoted the acquisition of strength as a benefit of consuming the product. The Commission noted that the superhero was depicted making a hand gesture symbolizing strength, which suggested that the product, “Kiwigén” was the source of power and energy.

Use of fruit images

Another important restriction under the Healthy Food Law pertains to the use of fruit images on processed food products that do not contain those natural ingredients. This regulation directly affects trade marks that incorporate such elements, forcing businesses to reconsider their branding strategies.

In Resolution No. 101-2019/CCD-INDECOPI, a company was fined for using a personified pineapple on the packaging of a beverage that did not contain pineapple as an ingredient.

Despite the company's argument that the image was a registered trade mark, the competent authority ruled that using the fruit in a misleading way violated the provisions of the law, particularly Article 8(m), which prohibits the use of images that falsely suggest the presence of natural ingredients.

The authority further established that the fact that the pineapple image was a registered trade mark did not exempt the company from complying with advertising regulations.

Celebrity and athlete endorsements

In addition to restrictions on characters and visuals, Peru’s Healthy Food Law limits the use of real-life figures such as celebrities and athletes in advertising aimed at children. The law seeks to prevent the association of unhealthy products with positive attributes such as athletic performance or social popularity.

In Resolution No. 112-2019/CCD-INDECOPI, a beverage company was fined for using the image of a well-known Peruvian soccer player in its advertising. The use of the athlete, combined with the product's positioning as a sports drink, was seen as promoting the idea that consuming the beverage would improve athletic performance, which is prohibited under Article 8(e) of the law.

Advertising warnings

Peru’s Healthy Food Law also mandates the inclusion of "high in" labels on food packaging for products that exceed the permissible levels of sugar, fat and sodium. These labels are intended to inform consumers about the potential health risks associated with consuming these products.

However, this requirement limits the space available for branding and marketing, as it obliges companies to allocate a significant portion of their packaging to these warnings.

This regulation echoes similar measures implemented in countries such as Chile, where "high in" labels have become mandatory for certain food products. In Peru, the requirement to include these warnings has prompted businesses to rethink their packaging design and how they present their brands to consumers.

Conclusions

The imposition of brand restrictions in Peru highlights the ongoing challenge of balancing public health objectives with the rights of trade mark holders. While these regulations aim to protect vulnerable consumers, particularly children, from unhealthy products, they also limit businesses’ ability to fully utilize their trade marks in differentiating their offerings and conveying their unique value propositions to the market.

Although Peru’s approach is somewhat less restrictive compared to countries such as Chile and Mexico, it still creates significant hurdles for companies, especially in the processed foods and beverages sector. The limitations on the use of characters, visual elements, and specific marketing strategies that are crucial for building brand recognition and consumer loyalty present serious challenges. These constraints can undermine a brand’s ability to effectively communicate with its target audience, especially younger consumers.

Moreover, the broader economic implications of these restrictions cannot be overlooked. Innovation may be stifled, as companies are forced to operate within narrower marketing frameworks, limiting their capacity to differentiate their products and engage consumers.

This is particularly challenging for small and medium-sized enterprises (SMEs), which often rely on creative branding strategies to remain competitive. SMEs may find it more difficult to comply with these regulations while maintaining their market presence and competitive edge.

It is vital that policymakers continually evaluate the impact of these restrictions and explore less burdensome alternatives that could achieve the same public health outcomes.

Striking the right balance is essential. Overly restrictive measures can dampen innovation, reduce competition, and diminish the inherent value of trade marks.

As Peru continues to implement and refine its brand restrictions, it is crucial to ensure that these measures remain proportionate, evidence-based, and considerate of their broader economic consequences, fostering both consumer protection and a competitive, innovative marketplace.

Maria del Carmen Alvarado and Daniela Supo are lawyers with Rodrigo, Elias & Medrano Abogados in Peru. Maria is also a member of the MARQUES Regulatory Team. 

Pictures provided by the authors

The EUIPO has published “EU Member States’ potential for protecting craft and industrial Geographical Indications”. The document looks at interest in protecting craft and industrial geographical indications (GIs) in the EU.

The study provides an overview of current national legal frameworks and assesses the extent to which there is a local (national) interest in the protection of craft and industrial GIs.

It found that 16 member states have adopted sui generis protection systems, which differ in terms of scope, administration, registration fees and enforcement measures.

It also found strong private sector support for protection but more moderate interest among public sector stakeholders: public authorities from eight member states indicated that their country could seek the opt-out under Article 19 of the new Regulation on Craft and Industrial GIs.

The new Regulation will fully apply by December 2025.

The study was based on 130 responses to a questionnaire from stakeholders in all 27 member states.

EUIPO is hosting a Geographical Indications Conference on 28-29 January 2025. More details are here.

The picture shows the cover of the study.

The next MARQUES Meet the Judges event will take place at the Off/Off Theatre in Rome on 30 January 2025, from 13:00 to 17:00 CET.

Participants will include judges from the Italian courts, including the Supreme Court of Cassation, members of the Italian Board of Appeals, the EUIPO Boards of Appeal, guests from the Italian Patent and Trade Mark Office and industry representatives.

Topics to be covered include:

• proof of use requirements and the ensuing enforceability of earlier rights;
• the value of market surveys to prove reputation or acquired distinctiveness and the standard requirements that market surveys and other ex parte evidentiary materials should meet;
• the protection of well-known brands, and, in this framework, of heritage brands;
• unconventional trade marks (such as colours, shapes, slogans, product trade dress, sound and multi-media trade marks), in relation to market realities and brand owners’ needs, and the difficulties in obtaining registration of these; and
• the protection of patronymic trade marks

Full details of the programme and speakers will be announced soon.

The meeting will be held in Italian. It will be followed by a performance of a play (Two Man Play – an excerpt from The Trials of Oscar Wilde by Merlin Holland and John O’Connor, which is based on the 1895 libel trial of Oscar Wilde) and an aperitif.

Full details will be available on the MARQUES events page soon but in the meantime we encourage you to save the date!

A section on Portugal has been added to the chart on self-regulatory organisations (SROs) for advertising and unfair competition matters.

The chart is compiled by the MARQUES Unfair Competition Team and can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

Team member Nuno Cruz of J Pereira da Cruz S A in Lisbon has completed the questionnaire for Portugal. The project is led by Philippe Probst of Fuhrer Marbach & Partners in Switzerland.

The chart now covers Finland, France, Germany, Italy, Portugal, Sweden, Switzerland, Turkey and the USA.

Its purpose is to provide corporate lawyers and attorneys with a practical, user-friendly overview of self-regulatory organisations for advertising and unfair competition matters.

With growing digitalisation and globalisation of advertising and other business activities, it is increasingly important for businesses to familiarise themselves with self-regulation of advertising and other matters.

The chart covers advertising and unfair competition matters, but not consumer protection matters or industry-specific organisations.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

If you have any questions, please contact a member of the Unfair Competition Team.

The number of classes covered in trade mark applications in 2023 fell by 2% compared to 2022, according to data published by WIPO.

The annual World Intellectual Property Indicators (WIPI) Report found that there were 11.63 million trade mark applications covering 15.23 million classes in 2023.

According to the WIPI, the highest volume of filing activity came from applicants based in China with a combined domestic and abroad application class count of around 7.4 million; followed by US applicants (849,876), those based in the Russian Federation (543,692), and applicants from India (496,293) and Germany (441,293).

Among the top five origins, both India (+6.1%) and the Russian Federation (+30.1%) experienced growth in filings in 2023, while China (–3.4%), Germany (–7.3%) and the US (–10.1%) saw declines.

Applications from 13 of the top 20 countries of origin fell in 2023. The biggest declines were in Switzerland (-10.5%), Türkiye (-17.6%) and the US (-10.1%).

But trade mark filing grew in seven of the top 20, including Indonesia (+10%), Mexico (+11.1%), the Russian Federation (+30.1%) and Brazil (+8.5%).

In 2023, the research and technology sector accounted for 20.1% of global reported non-resident trade mark filing, followed by the health (13.7%), clothing and accessories (12.4%) and leisure and education (10.1%) sectors.

According to the WIPI, there were an estimated 88.2 million active trade mark registrations across 155 IP offices globally in 2023, an increase of 6.4% compared to 2022.

China had the highest number of trade mark registrations in force in 2023 (46.1 million) followed by the offices of India and the US, with nearly 3.2 million registrations in force each.

The WIPI also includes data on patents, designs, plant varieties and geographical indications. Find out more on WIPO’s website here. The image above is also taken from this page.

Registration is now open for the fourth edition of the European Trade Mark and Design Education Programme (ETMD EP) for Paralegals.

The programme is aimed at professionals working as intellectual property administrators, legal assistants or company employees who deal with legal or similar matters.

It will run from January 2025 to May 2025 and 60 places are available. The programme is led by EUIPO staff and IP professionals.

Applications can be made from now until 18 November 2024.

The programme includes about 80 hours of activities (ie about 5 hours a week) and costs €750.

Participants must pass two intermediate online exams and one final exam to obtain a certificate.

More information is available on the EUIPO Academy Learning Portal, including the promotional page and programme guidelines.

The sixth edition of the ETMD EP for practitioners will run in 2026 and will have 60 places. Further details have not yet been announced.

You can learn more about the ETMD EP, and MARQUES participation in it, in episode 21 of the Talking MARQUES podcast, which is available on the MARQUES website here.

Image from EUIPO website announcement

What is quiet luxury? That was the question addressed on the second day of the Luxury Brands Symposium in Vienna, in a session chaired by Noemi Parrotta, Spheriens, Italy, a member of the MARQUES Famous & Well Known Marks Team

Tobias Bayer, Editor-in-chief, The Italian Fashion Magazine, Italy discussed the emergence of quiet luxury in the fashion industry. Before COVID, fashion was dominated by elegant and bold styles led by brands such as Gucci, Virgil Abloh’s Off-White and Stone Island.

But since 2020, the industry been influenced by the simple styles evident in TV shows such as Succession and Peaky Blinders. “After the loud period, we came into a new period,” said Tobias. This is typified by Loro Piana, Zegna, The Row, Totême and Khaite.

“Quiet luxury is a bit of a fuzzy concept,” said Tobias. “It’s not boring. On the contrary, it’s quite remarkable.” It is characterised by timeless fashion, lack of logos and trade marks, noble fabrics and materials, sustainability and noteworthy construction.

On Thursday evening, Mag Astrid Fialka-Herics, Head of the Jewellery and Watches Department, Dorotheum, Vienna gave a talk on “Magnificent Jewels – Outstanding Brands” which was accompanied by a performance by the Streichquartett Klosterneuburg. This was followed by a Champagne Reception and Dinner.

Monica Vibeke Kristensen, Associate GC, and Serena Trotta, both from Loro Piana, Italy explained how the company has a vertically integrated value chain in Italy and was acquired by LVMH in 2013. Monica said the key aspects of quiet luxury are: products, aesthetics, quality and sustainability. “You have to touch it to understand it. From an IP perspective, this is the biggest challenge we face,” she said.

Products tend to be minimalistic, with straight lines and simple colours, but use high-quality materials. “This is going to stay, and it will make our job as lawyers hard and intense,” said Monica. Serena developed the theme of the collision of quiet luxury and traditional legal protection

She highlighted the challenge of counterfeits and copycats (also known as dupes – both high level and low level). The latter are particularly difficult to handle, said Serena, though unfair competition law can be useful. The company’s strategy is to collaborate with brands, platforms and authorities and to educate consumers to grow brand awareness.

Christoph Bartos, Boards of Appeal, Head of the Examination Board of the EUTM Education Programme, EUIPO, Spain emphasised the unitary character of the EU trade mark, and the need for classification to be clear and precise. “Quiet luxury has a problem – you don’t have trade marks,” he said.

He discussed cases where applications for position marks have been refused, including T-307/23 regarding two stripes on a shoe, R 1774/2023-1 for a line and a red heart on a piece of clothing. However, in R 1291/2023-2 a line on a shoe was accepted for registration and an EUTM was registered for colours on a sleeve (19030653).

Christoph also summarised recent decisions on pattern marks, sound marks and movement marks and initiatives such as a Common Communication and CP11. “I see some hope for registration of non-traditional marks based on inherent distinctiveness,” said Noemi.

“Maybe silence itself is a luxury,” said Dr. Reinhard Hinger, Chamber President of the Appellate Court of Vienna, Austria. While he said he had not found any cases specifically on quiet luxury, he presented 12 trade mark decisions that provided some useful points.

These covered horses, hotels, caviar, beer, fashion retail (ZARA HOME v AZRA HOME), movies (Rat Pack Filmproduktion v RAT PAC), drinks (F1 v Formula1), vehicles, entertainment (LADY GAGA v GAGA), tourism (AIDA CRUISES v AVIDA) and music (the shape of an organ).

Finally, Christoph returned to provide some insights on protection of marks with a reputation under Article 8(5) and in particular the various factors taken into consideration in assessing whether there is a link (ie, whether the contested mark calls the earlier reputed trade mark to mind): degree of similarity of signs, degree of closeness of goods and services, strength of reputation, degree of inherent distinctive character, existence of likelihood of confusion and any other factor.