Trade Marks 2019 Comparisons

Last Updated March 01, 2019

Law and Practice

Authors



Bustamante & Bustamante (Quito - HQ) has a trade marks team composed of three senior partners, three senior associates and two associates. Its practice includes registration of trade marks, trade names and distinctive marks, licences for using trade marks and variations, contracts, copyright, industrial property, domain names, risk protection, franchise and distribution, litigation, trade marks in digital communication, technological deals, licences and software advertisement, and also covers the connected areas of intellectual property and administrative law.

In the Ecuadorian legal system there are various different types of trade marks: service marks, product marks, word marks, design marks, combine marks, figurative marks, label marks, phonetic marks, smell marks, taste marks, three-dimensional marks, texture marks, animation marks, gesture marks, hologram marks, and other variations which are related to these. The rights in such trade marks are based on statutory law.

According to Ecuadorian legislation, when obtaining trade-mark rights it is necessary to have the trade mark registered first. The mere use of a trade mark without having registered it does not constitute rights, and can also constitute an infringement.

There are not specific standards for registering different types of trade marks. It is important to register them as they are going to be used – ie, with the same shape, colours and characteristics as were registered.

The intellectual property authority in Ecuador is the SENADI (the National Service for Intellectual Rights), which is in charge of managing trade-mark registrations and maintains a database in order to know which trade marks have been registered. This database is publicly available.

There are no different types of trade-mark register. In the case of any changes, renewals, changes of name, changes of address, assignments, etc, the original registration certificate is modified.

It is normal practice, although it is not mandatory, to search for prior trade marks before applying to register a trade mark. It is recommended that a search be carried out prior to the filing of a trade-mark application, in order to know the probability of the client succeeding in the attempt to file the application. This process carries a cost, since many databases are used in order to provide a more accurate result.

The requirements to register a trade mark are the following:

  • power of attorney, legalised by apostille;
  • specification of the goods or services to be protected by the mark, and their class as per the International (Nice) Classification;
  • if applicable, the logo or design;
  • the complete name, address and country of incorporation or citizenship of the applicant; and
  • if priority is claimed, the particulars of the priority document in order to file the application, a certified copy of the priority document and a certification from the appropriate office stating the filing date.

Anyone who has interest in obtaining rights over a trade mark can file a registration application. This includes individuals, legal entities, trade bodies, public entities, etc.

The Ecuadorian legal system allows registration of words, images, logos, sounds, shapes, colours, scents, tastes, monograms, holograms, symbols, letters, numbers, containers, labels, textures, animations, gestures, emblems and other variations which are related to these.

The Ecuadorian legal system does recognise other rights to signs or source-identifiers beside trade marks. These other rights are commercial names, domain names, slogans, collective trade marks, certification marks, trade names and trade dress, among others. These rights arise the same way a trade-mark registration arises.

The Ecuadorian legal system does not allow multi-class applications, only single-class applications. The registration procedure is the following: a law firm receives instructions from its client, which include the trade-mark name and logo, if it has one, the name and address of the applicant, the international class of the trade mark and the products/services that it protects. Once it has this information, the firm may proceed to prepare the registration application, paying the official fee and filing the application online at the IP Authority Web System. Once the application has been filed, it takes approximately one month for it to be published in the Intellectual Property Gazette. When the trade mark is published, there is a 30-day term for third parties to oppose it. If no opposition is filed against the trade mark-registration application, it takes approximately five months for the analyst in charge of this matter at the IP Authority to analyse the trade mark. Once the trade-mark application has been analysed, it then takes approximately one month for the Authority to issue the resolution. If the resolution grants the registration of the trade mark, it takes approximately one month for the Authority to issue the registration certificate document. At each stage, it is prudent for the law firm to insist that the Authority takes the least time possible, and for the resolution to be issued as soon as possible.

Ecuadorian legislation establishes that for a trade mark to be used in commerce, it has to be registered. It is not possible to use a trade mark before its registration has been granted, with the exception of commercial names.

The Ecuadorian system only allows single-class applications, not multi-class applications. Therefore, it is not possible to apply for a number of trade marks within the same application.

The trade mark-registration procedure takes about eight to ten months if no opposition to the registration application is filed. To initiate a registration procedure, it is not necessary for the applicant to have an attorney. However, it is strongly recommended to conduct the procedure through an attorney in order to ensure that it is carried out correctly, and to keep the trade mark watched both throughout the process and once it has been registered.

Official fees for filing an application are USD208. Further costs are provided upon the client's request.

A trade mark can be refused by the IP authority if:

  • the trade mark is too similar to a trade mark previously registered or applied for, and will cause confusion for consumers;
  • the trade mark is insufficiently distinctive or too generic;
  • the trade mark is too descriptive;
  • the trade mark consists exclusively of the usual shapes of the products or their packaging, or of shapes or characteristics imposed by the nature or function of the product or service in question;
  • the trade mark contains a protected designation of origin for wines and any other alcoholic beverages;
  • the trade mark reproduces or imitates the name of the state, local governments or their official symbols;
  • the trade mark is contrary to law, morality, public order or good morals; and
  • it was created in bad faith, and other reasons.

The process by which to overcome any objections raised by the authority is the filing of a reversal appeal against the resolution issued by the trade mark office. The arguments that should be presented in the appeal should demonstrate why the authority is wrong in the criteria it has used for refusing the trade-mark registration, demonstrating, for example:

  • why the trade mark is in fact distinctive from others;
  • why the trade mark does not cause confusion for consumers; and/or
  • the existence of any relevant coexistence agreements and undertakings with other trade marks.

The trade-mark office considers the existence of prior rights as part of its examination process. Prior rights could be raised if similar trade marks of the same owner have been already registered, if they are notorious, if they have been registered in any other country in the Andean Community and if they have priority in other countries.

Third parties have the right to file oppositions during the procedure, or an appeal once a resolution has been issued. Once the trade mark has been published in the Intellectual Property Gazette, third parties have a 30-day term within which to file an opposition to the published trade mark. Any interested third party can bring such an action and the Authority will determine whether or not they may file the opposition.

A trade-mark application can be withdrawn by the applicant at any moment before the IP Authority has issued a resolution. The applicant can also change, amend or correct the application if there has been an error in the applicant's name or address. It is only possible to amend the list of goods if the applicant needs to proceed with a limitation, but it is not possible to add more products or services to the list of goods detailed in the application. The authority does not permit changes, amendments or correction of mistakes in the name of the trade mark, the design or the international class detailed.

It is possible to assign an application for a trade mark or grant a licence in relation to it during the application process. In practice it is only possible to grant licences over registered trade marks, and not over applications for registrations.

An applicant can appeal the IP Office's decision. Once the resolution has been issued, the applicant has ten working days within which to file the appeal. Once the appeal has been filed, it must be accepted by the authority, which gives notification of the term within which the applicant must file evidence documents. After evidence has been filed, the IP Authority will issue the final resolution after analysing the complete process. This process takes approximately 10-12 months.

According to the Ecuadorian legal system, registration of a trade mark with the competent national office confers the exclusive right to its use. The owner of a registered trade mark shall have the exclusive right to prevent all third parties that do not have the owner's consent from using identical or similar signs to the trade mark for goods or services in commerce, among other rights. Use of a non-registered trade mark does not grant any right to the owner, but using a non-registered trade mark in commerce is not prohibited.

It is not possible to divide a trade-mark application.

The term of protection once a trade mark has been granted is ten years. The trade mark owner can renew the trade mark six months before it expires, and has a six-month grace period once it has expired. In order to request the renewal of a trade mark, only the application has to be presented, attaching the power of attorney of the owner; the IP Office will then issue the corresponding renewal certificate. It is important to mention that it is not necessary to prove the use of a mark for its renewal.

According to Ecuadorian Law, exhaustion of a trade-mark right occurs when the trade mark has been introduced to the market by an authorised licensee or distributor. In this case, the owner of the trade mark may not be able to initiate infringement actions against subsequent distributors.

Ecuador is not part of the Madrid Convention.

If an applicant has provided incorrect information at the time of filing, he or she may correct the application if there has been an error in the applicant's name or address. It is only possible to amend the list of goods if the applicant needs to proceed with a limitation, but it is not possible to add more products or services to the list of goods detailed in the application. The authority does not permit changes, amendments or corrections of mistakes in the name of the trade mark, the design or the international class detailed.

If a design mark has been updated or the design has changed, it is necessary to file a new registration application. If the design has not changed, then the renewal process is the same as mentioned in 1.24 Term of Protection, above.

Once a trade mark has been registered, its owner is able to use ® or ™, but it is not a requirement for symbols of this kind to be used. The IP Authority does not allow design marks or word marks to include these symbols in the registration application.

Assignments must be in writing and comply with the provisions of the Common Regime for the Treatment of Foreign Capital and on Trade Marks, Patents, Licences and Royalties, as well as the Organic Law for the Regulation and Control of Market Power and the Organic Code of the Social Economy of Knowledge, Creativity and Innovation (known as the Invention Code). Assignments become effective upon issuance of the corresponding certificate by the IP Office.

Assignment applications are uploaded to the online IP platform, together with the supporting documents duly legalised by apostille (ie, the assignment document and the power of attorney granted by the assignee). Subsequently, the Authority analyses the documents, and if they are complete and in accordance with the law, the corresponding transfer certificate is issued; in the event that the requirements concerning the supporting documents are not complied with, the Authority will grant a period of two months within which to submit them.

The Invention Code stipulates the obligation to register all ownership changes (change of name, assignment, merger and/or other lawful changes, such as change of address) with respect to any kind of intellectual property application or registration with the SENADI. In accordance with the Andean norm, failure to register will entail the ineffectiveness of the change in the case of lawsuits with third parties.

The Invention Code stipulates that intellectual property rights are considered movable property exclusively for the granting of liens on them. However, a prohibition on the alienation of such rights may be decreed subject to the provisions of the Civil Code and General Organic Code of Processes, as well as its seizure and auction.

Licences must be in writing and comply with the provisions of the Common Regime for the Treatment of Foreign Capital and on Trade Marks, Patents, Licences and Royalties, as well as the Organic Law for the Regulation and Control of Market Power and the Organic Code of the Social Economy of Knowledge, Creativity, And Innovation (known as the Invention Code). Licences will become effective upon the issuance of a corresponding resolution by the IP Office. According to the Organic Law for the Regulation and Control of Market Power, a monopoly is not allowed.

The procedure for licensing a trade mark matches the process described in 2.2 Procedure for Assigning a Trade Mark, above. Licence applications are uploaded to the online IP platform, together with the supporting documents duly legalised by apostille (ie, the licence agreement and the power of attorney granted by the assignee). Subsequently, the Authority analyses the documents, and if they are complete and in accordance with the law, the corresponding licence resolution is issued; in the event that the requirements concerning the supporting documents are not complied with, the Authority will grant a period of two months within which to submit them.

The Invention Code also stipulates the obligation to register all agreements for use (authorisation, licence and/or franchise) with respect to any kind of intellectual property application or registration with the SENADI. In accordance with the Andean norm, failure to register shall render the assignment or transfer invalid with respect to third parties.

According to the provisions of the Common Regime for the Treatment of Foreign Capital and on Trade Marks, Patents, Licences and Royalties, as part of the minimum requirements it is mandatory to determine a term of validity.

There are no additional requirements that must be met in order for a licence or agreement to be valid.

According to Andean Decision 486 and the Invention Code, once a trade mark application has been published, the law grants a term of 30 working days for any interested third party to file an opposition, which may be based on a trade mark registered in the country, a trade mark registered in the Andean community, a well-known trade mark, or an effect on a mark of competitors within the same or a closely related industry. A potential opponent cannot request an extension of the time within which an opposition may be filed.

Any interested third party may file an opposition. According to the law, only in the case of trade mark holders domiciled abroad must the party be represented by an attorney-in-fact domiciled within Ecuador.

The official fee for filing an opposition is USD140. Further costs are provided upon the client's request.

Once an opposition has been filed, the IP Office notifies the applicant, granting 30 working days for the applicant to file a response. Subsequently, and once the aforementioned term has ended, the IP Office issues a new notification granting a term of 30 working days for the parties to present evidence, after which the Authority will issue the corresponding resolution. During the opposition stage there are no oral hearings; however, briefs may be submitted at any time until the resolution is issued.

A decision of the trade mark office may be challenged by filing an appeal with the IP Specialised Collegial Body, within the following ten working days, or a law suit before the Administrative Litigation Court within the following 90 working days.

According to Ecuadorian law, trade-mark rights are only obtained by registration, with the exception of commercial names that can obtained by means of use. Infringement actions cannot be pursued based on a non-registered trade mark. The owner of a trade-mark right might initiate infringement procedures at administrative or judicial instances.

At the administrative instance, the Trade Mark Authority may declare the infringement and order payment of fines and cease of use.

At the judicial instance, the owner of a trade mark right might initiate the following actions:

  • injunctive reliefs to cease or prevent an infringement;
  • damages requests once the infringement action has been granted; and/or
  • legal action to obtain title, in order to determine the legitimate owner of a trade-mark right.

A trade mark-owner can initiate infringement proceedings before the Trade Mark Office (SENADI), a Civil Judge, Prosecutor or Criminalist Judge, or an Administrative Litigation Court.

The Trade Mark Office, in a decision on infringement, can order:

  • injunctive reliefs;
  • payment of fines; and/or
  • the cease of the infringement.

Trade-mark infringement is the only exception to the right of an infringer to commence declaratory judgments. Consequently, the infringer may not start a declaratory judgment proceeding.

Administrative Litigation Courts have jurisdiction over trade-mark matters, in general, while Civil Judges have jurisdiction for matters related to pay or damages and injunctive reliefs, and Prosecutors and Criminalist Judges have jurisdiction in infringement matters.

At second instance (only in procedures initiated before civil judges), the Provincial Court has jurisdiction over trade-mark matters.

At final instance (cassation remedy), trade-mark procedures are handled by the National Court of Justice.

When initiating an injunctive relief action before a civil judge, it is a prerequisite that the plaintiff must demonstrate the potential infringement of a trade-mark right.

In cases of damage relief, it is a prerequisite that the plaintiff must have obtained a favourable resolution or judgment on an infringement action, which has not been appealed or challenged.

When initiating an appeal procedure before the Administrative Litigation Court with respect to a resolution or administrative act issued by the SENADI, it is a prerequisite that the challenged resolution must be non-appealable before the administrative authority.

Parties in trade-mark litigation matters must be represented by lawyers.

When initiating the infringement procedure, and in order to halt any possible unauthorised use, the owner of a trade mark might request remedies such as:

  • cease of use;
  • prohibition on the sale of goods or services with the trade mark;
  • seizure of products; and/or
  • an information request related to the use of the trade mark.

If an infringement action is not granted, a potential defendant may still initiate actions for damage relief. Within this procedure, the defendant may request revocation of injunctive reliefs. The defendant cannot request declaratory judgments.

The Ecuadorian legal system permits any party to request the administrative authority or the judge to request certain information from the other party.

An initial pleading might:

  • identify the trade mark-owner;
  • identify the infringed trade mark right (ie, specify the trade mark registration);
  • identify the possible infringer;
  • detail the circumstances of the possible infringement; and/or
  • file and announce evidence that will be filed to demonstrate the infringement.

There are no special provisions for lawsuits in trade-mark proceedings that differ from non-intellectual property proceedings.

A defendant in a trade-mark action can initiate lawsuits or administrative actions such as cancellation, nullity or antitrust actions.

The Ecuadorian legal system does not permit class actions.

Threat provisions are considered a crime.

The abuse of a trade-mark right and dominant market position can also be considered a restriction on the initiation of actions according to the Antitrust Law.

The necessary parties to an action for infringement are the possible infringer and the affected party (the trade mark-owner or a third party). An infringement action can be initiated by a licensee, if the licence contract has been registered before the Trade Mark Office.

It is not possible to initiate actions if a trade mark has not been registered.

The factors to be considered when determining an infringement are:

  • the identity of the trade marks/imitation: when the infringer has used an identical trade mark for the same or related products/services;
  • risk of confusion: when the trade marks in conflict are similar enough to cause confusion regarding the products/services or the business origin;
  • distinctiveness of older mark: when the older mark is constituted by generic, common use or descriptive terms; and/or
  • coexistence: when the trade marks in conflict have already coexisted in the market.

When determining an infringement, it is necessary to demonstrate that the defendant has used the trade mark as a sign. Informative use is not considered an infringement.

In an infringement procedure, the defendant can allege:

  • coexistence of trade marks in the market;
  • priority;
  • fair or authorised use (informative use);
  • abuse of trade-mark rights;
  • abuse of market share; and/or
  • bad faith.

Surveys and expert reports can be used as evidence in an infringement procedure. However, administrative authorities and courts do not consider this evidence as the most relevant when issuing a decision.

According to Ecuadorian law, a trade-mark infringement constitutes a punishable act, the punishment of which can be enforced through administrative, civil or criminal channels; thus, the procedure to be applied will always depend on the type and form of effect that has been had on the registered trade mark.

Ecuadorian law does consider customs seizure. A trade mark-owner can request the Trade Mark Office to suspend the import or export of goods that might affect a registered trade mark in Ecuador. The Customs Authority must suspend any relevant commercial action (import/export) until the Trade Mark Office issues a decision regarding the infringement.

Remedies and reasons for the revocation or cancellation of a trade mark include:

  • total or partial cancellation for non-use: this resource is applied when, without valid reason, the trade mark has not been used by its owner, by its licensee or by another person authorised to do so, during the three consecutive years preceding the date on which the cancellation action is initiated;
  • cancellation action due to genericity: this resource is applied when the owner of the trade mark has caused or tolerated a mark to become a common or generic sign to identify or designate one or more of the goods or services for which it was registered;
  • absolute nullity action of a trade mark may be brought in the following cases:
    1. it was granted on the basis of false data or documents which were essential for its being granted; and
    2. in general, it was granted in violation of the law; and
  • relative nullity action of a trade mark may be brought in the following cases:
    1. when its registration affects the rights of third parties;
    2. when its registration was performed in bad faith; or
    3. when its registration was performed to perpetrate, facilitate or consolidate an act of unfair competition.

Total or partial cancellations for non-use and cancellation actions due to genericity should be brought before the trade-mark office; on the other hand, absolute nullity actions and relative nullity actions can be brought before the trade-mark office or the Administrative Litigation Court.

To apply for total or partial cancellation for non-use, it is necessary to wait until the trade mark has been in force for three years.

Cancellation actions due to genericity and absolute cancellation actions can be filed at any time.

Relative nullity actions can be filed up to five years after the granting of a trade mark.

Revocation/cancellation proceedings may be lodged by any interested third party. The admissibility and fulfilment of the requirements for such actions are verified by the relevant authority prior to acknowledging the action.

A partial cancellation or partial nullity applies when just one or some of the goods or services for which the trade mark was registered affect the registration.

It is not possible to amend ongoing cancellation or nullity proceedings.

If it is necessary and appropriate, the Authority may accumulate a number of causes into one hearing; otherwise, the Authority shall resolve these causes in chronological order according to their presentation.

The resolutions issued by the IP Office can be challenged before the Administrative Litigation Court in the judicial instance. Ecuadorian law also permits other actions, including legal action to obtain title (which consists of a claim for recovering ownership of a trade mark or any IP right), and claims for damages. Some actions relating to infringement proceedings can also be filed under criminal law.

Cases are determined by legal judges through the judgment that they issue at the end of a process. The parties do not have any influence; however, the parties defend themselves in the process through their lawyers, who will try to persuade the judges.

Parties present themselves once the lawsuit has been admitted by a judge. The trial initiates with a mandatory conciliation hearing in which the parties can settle the case. A settlement can be reached at any moment by any alternative method before a judicial decision is issued.

Parallel court proceedings can influence related cases. Trade-mark rights might be challenged in other procedures such as cancellation actions, nullity actions or antitrust actions; if a trade-mark's rights are cancelled, any proceeding relying on that trade-mark's right would be rejected.

Injunctive reliefs, such as the freezing of bank accounts, the freezing of assets, and other actions to ensure the cease of the infringement or the payment of damages, may be requested at the beginning of a procedure or after the verdict within the execution procedure.

Once a verdict has been issued, a plaintiff may request remedies including damages (including enhanced damages for wilful infringement), recovery of attorneys’ and official fees, and publicity notices.

A judge might only grant the injunctive reliefs or remedies requested by the parties.

A prevailing defendant may request remedies including damages (including enhanced damages for wilful infringement or false accusations) and reimbursement of attorneys’ and official fees.

There are no different types of remedies for different types of trade marks.

The law establishes a special procedure for appeals, which must be presented before the IP Decision Making Board in the administrative instance. It is also possible to challenge a resolution before the Administrative Litigation Court in the judicial instance.

An appeal implies a full review of the facts of a case.

It normally takes approximately one year for an appeal to be decided.

Ecuadorian legislation and legal practice recognises dilution as a ground to oppose a trade-mark registration or to prevent the use of a mark in a lawsuit. In general, those signs whose use in commerce may constitute an impediment to the rights of third parties may likewise not be registered as trade marks, in particular where this would cause confusion or association for consumers. This concept includes the practices of taking unfair advantage of the prestige of a sign, or weakening its distinctive force or its use for commercial or advertising purposes.

Ecuadorian legislation protects trade marks that are famous or notorious outside of the country but not necessarily registered within it. According to the law known as the Código Orgánico de la Economía Social de los Conocimientos, Creatividad e Innovation and Decision 486, a well-known distinctive sign is understood to mean a sign that is recognised as such in any member country of the Andean Community of Nations (Ecuador, Colombia, Bolivia and Perú), or in any country that is a member of the Paris Convention, the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), or any country that has an intellectual property agreement with Ecuador in the pertinent sector, regardless of the way or means by which it was first known. Decision 486 establishes that the well-known nature of a sign shall not be denied solely because it is not registered or in the process of being registered in a member country of the Andean Community of Nations or in any other country.

Both Decision 486 and local Ecuadorian law (the Código Orgánico de la Economía Social de los Conocimientos, Creatividad e Innovation) have chapters regarding Geographical Indications, including appellations of origin and indications of origin.

Both Decision 486 and local Ecuadorian law (the Código Orgánico de la Economía Social de los Conocimientos, Creatividad e Innovation) have chapters regarding certification marks. A certification mark shall be understood to be any sign that is intended to be applied to goods or services, the quality or other characteristics of which have been certified by the owner of the mark. A certification mark may be owned by a public or private business or institution, or a state, regional or international organisation.

Ecuadorian legislation does not have a special rule related to the ability of a person to use their own surname as a mark. There is an express prohibition on the registration of a word that consists of a sign that is a capable of affecting the identity or prestige of legal entities, whether non-profit or not, or a natural person other than the applicant or someone who is identifiable by the general public as being such a different person, particularly in regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait, or caricature, where no consent has been obtained from that person or, if deceased, the declared heirs of that person.

The costs arising before filing a lawsuit are provided upon a client's request.

Fees for bringing infringement actions are determined on a case-by-case basis, depending on complexity.

If the prevailing party initiates a claim for damages, which may include costs of litigation such as court fees, expenses and attorneys' fees, and this claim is accepted by the appropriate authority, the losing party shall pay these amounts to the prevailing party.

Any alternative dispute resolution procedure can be used regarding trade-mark rights. Although it is not a common practice in Ecuador, there are few arbitration procedures regarding trade-mark rights. The most common procedure is mediation.

A trade-mark design can also be protected by copyright.

Bustamante & Bustamante

Av. Patria E4-69 y Amazonas
Cofiec Building
4th floor, Quito 170526
Ecuador

+ 593 2 256-2680

+ 593 2 255-9092

bustamanteybustamante@bustamante.com.ec www.bustamanteybustamante.com.ec
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Law and Practice

Authors



Bustamante & Bustamante (Quito - HQ) has a trade marks team composed of three senior partners, three senior associates and two associates. Its practice includes registration of trade marks, trade names and distinctive marks, licences for using trade marks and variations, contracts, copyright, industrial property, domain names, risk protection, franchise and distribution, litigation, trade marks in digital communication, technological deals, licences and software advertisement, and also covers the connected areas of intellectual property and administrative law.

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