Peru’s Cola Wars Escalate: A Trademark Battle Signaling Broader Risks for Brand Owners

A seemingly localized dispute between two Peruvian beverage companies, San Miguel del Sur Bottling Plant (ISM) and Ajeper (Grupo Aje), over the use of popular soda brands like “Kola Real” and “Cielo” has culminated in a significant legal ruling. But this isn’t just about Kola; it’s a bellwether for how companies navigate complex trademark ownership, donation contracts, and the increasingly aggressive tactics used to defend market share – a trend with implications far beyond Peru’s borders.

The Roots of the Dispute: A Tangled Web of Ownership

The conflict stems from trademarks originally registered in 1992 by Huancayo Bottling Plant. After a 2008 split, a portion of these trademarks were transferred via a “donation contract” to related parties. San Miguel Bottling Plant subsequently used these brands with the authorization of its founder, while Ajeper utilized them with the authorization of Huancayo Investments. This co-ownership arrangement, while initially functional, fractured in early 2024 when ISM accused Ajeper of unfair competition through denigration, alleging Ajeper implied ISM’s use of the brands was illegitimate in communications with key clients like Supermercados Peruanos and Corporación Primax.

Initial Claims and Indecopi’s First Ruling

Ajeper initially defended its actions, claiming the letters were responses to client inquiries and protected its interests. Indecopi, Peru’s competition and intellectual property authority, initially sided with Ajeper, finding no evidence of false statements. However, the case took a turn when Ajeper argued the donation contract placed restrictions on ISM’s ability to use the trademarks without full co-owner consent. This argument hinged on the interpretation of the contract’s terms and the legitimacy of ISM’s continued use.

The Donation Contract Dilemma: A Lesson in Due Diligence

The core of the legal battle revolved around the 2002 donation contract. Ajeper contended that the recipient of the donation couldn’t sublicense or transfer the trademark rights without the consent of all co-owners. This highlights a critical risk for companies acquiring intellectual property through donations or similar arrangements: thorough due diligence is paramount. Failing to fully understand the restrictions and obligations embedded in these contracts can lead to protracted legal disputes and significant financial repercussions. The case underscores the importance of not just owning a trademark, but understanding the full scope of rights and limitations associated with that ownership.

Judicial Processes and Conflicting Rulings

Adding another layer of complexity, parallel legal proceedings were underway in the Peruvian judiciary, initiated by Huancayo Investments alleging breaches of the donation contract. However, these proceedings were initially hampered by questions of standing, with the courts finding Huancayo Investments lacked the legitimacy to pursue the claims. This demonstrates the potential for conflicting rulings and the need for a coordinated legal strategy when disputes arise across multiple jurisdictions.

Indecopi’s Final Verdict: A Partial Victory for San Miguel

After a lengthy review, Indecopi’s Specialized Chamber in Defense of Competition ultimately confirmed the initial ruling, finding that certain statements made by Ajeper did not convey the damaging messages alleged by ISM. However, the chamber revoked parts of the initial decision, finding that other statements did undermine ISM’s reputation by implying illegitimate use of the “KR,” “Kola Real,” “Cielo,” and “Sabor de Oro” brands. Ajeper was fined approximately $102,000 (68.01 UIT) and ordered to cease disseminating the offending communications. This nuanced outcome demonstrates the importance of carefully crafting communications to avoid even the appearance of disparaging competitors.

The Future of Trademark Disputes: Increased Scrutiny and Proactive Defense

This case signals a growing trend of aggressive trademark enforcement and a willingness by companies to leverage legal challenges to gain a competitive edge. We can expect to see increased scrutiny of donation contracts and other complex ownership structures, as well as a greater emphasis on proactive brand defense. Companies must invest in robust trademark monitoring systems, develop clear internal guidelines for marketing communications, and be prepared to swiftly respond to any perceived threats to their intellectual property. The rise of social media and online marketplaces further complicates matters, requiring constant vigilance and a proactive approach to protecting brand reputation.

What are your predictions for the future of trademark enforcement in emerging markets? Share your thoughts in the comments below!