Descriptiveness and Genericness in Peru Under Article 129(d) and 129(e)

For many applicants in Peru, the most immediate registrability obstacle is not a prior conflicting mark but the mark’s own wording. Terms that describe the goods, name them, praise them too directly, or communicate product characteristics in ordinary language may be refused under Article 129 of Legislative Decree No. 823. This matters because businesses often prefer marks that instantly explain what they sell. From a marketing perspective that may seem efficient. From a trademark perspective in Peru, it can be fatal unless the sign has acquired distinctiveness or the registrable claim is limited to a broader composite with a truly distinctive dominant element.

The Legal Framework: Legislative Decree No. 823 Article 128 and Article 129(d)-(e)

• Article 128: requires that a mark be perceptible, sufficiently distinctive, and capable of graphic representation.
• Article 129(a): bars signs that cannot constitute a mark under Article 128.
• Article 129(d): bars signs consisting exclusively of indications that may serve to designate or describe the kind, quality, quantity, intended purpose, value, place of origin, time of production, or other characteristics or information concerning the goods or services.
• Article 129(e): bars signs consisting exclusively of a common or usual designation of the goods or services in ordinary language or trade usage.
• Article 163: requires use of the mark as registered, which becomes relevant where applicants seek protection for a composite containing descriptive matter but rely in practice on a different presentation.
• Decision 486 principles: inform the interpretation of descriptiveness, genericness, and acquired distinctiveness in Andean trademark practice as applied by INDECOPI.

The Descriptiveness and Genericness Test Under Article 129(d) and 129(e)

The Peruvian legal test asks what the relevant consumer would understand when encountering the sign in relation to the goods or services claimed. Article 129(d) targets wording that immediately conveys information about product characteristics. Article 129(e) goes further and targets wording that is itself the common name of the product or service. The distinction is doctrinally important.

A descriptive term tells the consumer something about the goods or services. It may describe quality, intended use, ingredients, geographical origin, function, or another characteristic. Examples include wording equivalent to “sweet,” “fast,” “organic,” or “delivery” where those words directly describe the relevant offering.

A generic term is the name of the thing itself. It is how consumers ordinarily refer to the product category. If the sign is the legal and commercial name of the goods, it cannot identify a single trade source and is never registrable on its own.

The statutory word “exclusively” matters. INDECOPI asks whether the sign consists exclusively of descriptive or generic matter. A composite sign may survive if the overall impression is dominated by distinctive matter and the descriptive wording remains subordinate or disclaimed. But where the non-descriptive additions are trivial, decorative, or insufficiently source-indicating, the application will still fail.

The standard applied by INDECOPI is practical and consumer-facing. Examiners do not ask whether the applicant intended the word to be brand-like. They ask whether the relevant consumer, in the marketplace, would perceive the wording as product information rather than origin information. If the answer is yes, refusal is likely.

What INDECOPI Considers Descriptive or Generic

INDECOPI is strict where the applied-for wording is ordinary Spanish or a commonly understood foreign language term. Examiners also consider context. The same word may be distinctive for one class of goods and descriptive for another.

Common triggers for refusal

• Kind or nature of goods: words naming the product or service category.
• Quality or characteristics: terms like premium, natural, express, light, fresh, or bio when used literally.
• Intended purpose: wording that explains how the product is used.
• Value or quantity: terms suggesting size, discount, percentage, or measurable advantage.
• Place of origin: geographic indications or place names used descriptively.
• Trade usage: wording commonly used in the relevant industry, even if not purely dictionary-defined.

Word marks

For word marks, the analysis is semantic first. If the verbal meaning directly informs the consumer about the goods, Article 129(d) is engaged. If the wording is the common name of the product, Article 129(e) is engaged. Foreign words are not safe merely because they are foreign. If a meaningful portion of Peruvian consumers would understand them, INDECOPI may translate them and refuse them accordingly. English, Portuguese, and widely understood commercial vocabulary are especially vulnerable.

Logo and figurative marks

A figurative mark can also be descriptive if the image simply depicts the product or its function. A coffee cup for coffee services, a shoe silhouette for shoe retail, or a loaf design for bakery goods may be considered too ordinary to serve as a source identifier. If the device is merely an expected representation of the goods, it may lack distinctiveness under Article 128 and Article 129(a), or reinforce a descriptiveness objection under Article 129(d).

Combined marks and stylization

Stylization does not automatically cure a descriptive or generic word. INDECOPI looks at the mark as a whole, but it also identifies the dominant element. If the word portion is large, legible, and central, and that word is descriptive or generic, ordinary stylization will rarely save the application. Decorative fonts, routine borders, and minor graphic flourishes usually do not transform non-distinctive matter into a registrable sign.

Stylization can help where the figurative presentation is genuinely distinctive and dominates consumer perception. That is more likely when the design is original, prominent, and not merely decorative. In such cases, the office may permit registration of the composite while making clear that the descriptive wording remains free for third parties to use.

The recent public discussion around POSTRES CUCHAREABLES by SIENNA is illustrative. INDECOPI accepted protection for the composite mark as a whole while clarifying that the phrase “postres cuchareables” remained free for public use. The protectable significance lay in the composite presentation and the distinctive source-indicating matter, not in monopolization of the descriptive wording.

Translations and multilingual issues

Peru is a Spanish-speaking market, but examiners also consider how common foreign-language terms will be understood by average consumers. If a foreign word is widely understood in Peru as descriptive, it may be refused on that basis. If it is obscure to the relevant public, it may be treated as arbitrary. Applicants should therefore assess not only literal translation but also market familiarity. Where a term has multiple meanings, the relevant meaning in the context of the goods controls.

Key Case Law

• FAM® vs. UNIVASER [2015] — the Intellectual Property Chamber affirmed refusal of wording that directly described the product. The case confirms that Article 129(d) is applied strictly where the descriptive meaning is immediate.
• TÉCNOPAR LUCKY CAT [2018] — the Chamber treated “Lucky Cat” for electronics as fanciful in context rather than descriptive. The principle is that not every commercially suggestive phrase is descriptive; context matters.
• POSTRES CUCHAREABLES by SIENNA [recent INDECOPI practice] — the descriptive phrase remained free for use, while protection was limited to the composite mark as a whole. This illustrates the role of disclaimable and weak matter in combined marks.

Beyond these examples, no comprehensive line of published judicial authorities has displaced INDECOPI’s ordinary approach under Article 129(d) and 129(e). Where a specific proposition cannot be confirmed from published Peruvian cases, it is safer to say no leading cases have been published.

The Procedure for Responding to a Descriptiveness or Genericness Refusal

Step 1: Identify whether the objection is under Article 129(d) or 129(e)

This distinction matters because genericness is harder to overcome. A generic sign generally cannot be salvaged except as part of a broader composite with independent distinctive matter.

Step 2: Assess whether the office has overread the meaning

Applicants should examine dictionary definitions, trade usage, and consumer perception. If the term is suggestive rather than descriptive, the response should explain why some mental step is required before the consumer reaches the characteristic in question.

Step 3: Evaluate the role of stylization or design

If the application is for a combined mark, show that the figurative element is distinctive and dominant. If appropriate, accept that no exclusive right is claimed over the descriptive wording alone.

Step 4: Consider narrowing the specification

Sometimes descriptiveness arises only because the goods are drafted too broadly. A more precise identification may reduce the direct semantic link between the wording and the goods.

Step 5: Present acquired distinctiveness evidence if available

Although difficult, applicants may argue that the sign has acquired distinctiveness through use. Evidence can include invoices, advertising, market recognition, duration of use, sales data, and survey material where available. The evidence should show that consumers recognize the sign as indicating a single commercial source, not merely describing a product category.

Step 6: Appeal if the office ignores context

Appeal to the Intellectual Property Chamber may be worthwhile where the first-instance examiner failed to distinguish descriptive from suggestive meaning or failed to assess the composite mark as a whole.

Strategic Recommendations

• Recommendation: Choose coined, arbitrary, or at least suggestive wording rather than terms that explain the product directly.
• Recommendation: Test foreign-language marks for consumer understanding in Peru before filing; many English commercial terms are treated as descriptive.
• Recommendation: If using a combined mark, ensure the figurative element is genuinely distinctive and not just packaging decoration.
• Recommendation: Be realistic about generic terms. Do not invest in trying to monopolize the common name of the goods.
• Recommendation: Gather use evidence early if the business insists on a weak mark and may need to argue acquired distinctiveness.
• Recommendation: Consider filing both a strong house mark and a weaker product descriptor separately, using the stronger mark as the primary rights anchor.

Common Mistakes

• Mistake: Assuming a descriptive phrase becomes registrable merely because it appears in a stylized font.
• Mistake: Treating laudatory wording as automatically distinctive when it directly communicates quality or advantage.
• Mistake: Ignoring the difference between descriptive and generic matter, and responding to both with the same arguments.
• Mistake: Filing a composite mark without considering which element will be seen as dominant.
• Mistake: Failing to present concrete evidence of acquired distinctiveness where that is the only plausible cure.

Key takeaway: Under Article 129(d) and 129(e), Peru will not grant exclusive rights in wording that consumers need to describe or name the goods. Stylization may help only where the distinctive element truly dominates, and acquired distinctiveness requires substantial evidence rather than assertion alone.