Overview of Ecuador Trademark Registration Service

Background

The "Republic of the Equator" was one of three countries that emerged from the collapse of Gran Colombia in 1830 (the others are Colombia and Venezuela). Between 1904 and 1942, Ecuador lost territories in a series of conflicts with its neighbors. A border war with Peru that flared in 1995 was resolved in 1999. Although Ecuador marked 25 years of civilian governance in 2004, the period has been marked by political turnover. Seven presidents have governed Ecuador since 1996.

Who May Apply?

Any physical person or juridical person can file an application for registration.

What Can Be Registered?

Any symbol that is capable of distinguishing goods or services and is capable of graphic representation is eligible for registration. The following signs, among others, can constitute a trademark: (a) word or combination of words; (b) pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels, and emblems; (c) sounds and smells; (d) letters and numbers; (e) a color demarcated to give it a specific shape, or combination of colors; (f) the shape of a product, its packaging, or its wrappings; and (g) any combination of the signs or means indicated in the items above..

What Cannot Be Registered?

The following are not eligible for registration: (a) marks failing to constitute a trademark according to the legal definition (that is, capable of distinguishing goods andlor services on the market and also capable of graphic representation); (b) marks that are not distinctive; (c) marks consisting solely of the ordinary shape of goods or packaging, or of shapes or characteristics dictated by the nature or particular function of the product or service; (d) marks consisting exclusively of shapes or other elements that constitute functional or technical advantages to the product or services to which they are applied; (e) marks that serve in commerce to designate or describe the quality, quantity, purpose, value, geographical origin, or time of production, or that impart other details, characteristics, or information, including expressions of praise for goods or services; (f) marks consisting exclusively of a sign or statement that is the common or technical name of the product or service concerned; (g) marks consisting solely of or that have become a sign or statement that is the common or usual designation for the goods or services in question; (h) marks consisting of a color in isolation, without any demarcation to give it a specific shape; (i) marks liable to create confusion in business circles or the public, in particular as to geographical origin, nature, manufacturing methods, characteristics, or qualities of the goods or services concerned, or their suitability for use; (j) marks reproducing, imitating, or containing a protected indication of origin; (k) marks containing a protected appellation of origin for wines and spirit beverages; (1) marks consisting of a national or foreign geographical reference that is liable to create confusion in its application , or services; to products (m) marks reproducing or imitating, without permission from the competent authorities, heraldic elements, such as coats of arms, flags, emblems, and official marks or stamps used for the purposes of the government control or initials or designations of any international organization; (n) marks reproducing or imitating marks denoting conformity with technical standards; (0) marks reproducing or imitating, or including the indication of a protected plan species, for goods or services relating to that species or if its use is likely to cause confusion or a mistaken association with that plant species; (p) marks contrary to the law, morality, public order, or good manners; (q) marks that infringe the rights of third parties that have a registered trademark or a prior application for a trademark that is likely to lead to confusion or false association; (r) marks consisting of a sign that may violate the intellectual property right or copyright of a third party; (s) marks consisting of a sign that is identical or similar to a protected trade name or advertising slogan and that is likely to lead to confusion; (t) marks consisting of a sign that is capable of affecting the identity or prestige of natural or juridical persons; (u) marks consisting of the name of indigenous, African American, or local communities or that constitute expressions of their culture or practice; and (v) marks consisting of a total or partial reproduction, imitation, translation, transliteration, or transcription of a well-known sign belonging to a third party without regard to the type of product or services to which it shall be applied for, the use of which would lead to a likelihood of confusion or mistaken association with that party; taking unfair advantage of the prestige of the sign; or weakening its distinctive force or its use for commercial or advertising purposes. An owner of a well-known mark may prevent the use of a similar mark, even if it is used on different goods or services. This provision applies only to protect well-known marks.

Rights

Third parties are not allowed to use marks similar to those registered for the same goods or services. Third parties may use and even register a mark similar to an unregistered mark to protect other goods or services, except when the registered mark is a well-known mark. According to the legislation, use of a mark does not grant any right to the user. In order to obtain the exclusive rights, one must register the mark. Third parties may use, without the consent of the owner of the registered mark, their own names, domiciles, or pseudonyms, a geographical name, or any other specific designation relating to the type, quality, quantity, purpose, value, place of origin, or time of production of their goods or rendering of their services or other characteristics thereof, provided that it is done in good faith and does not constitute use of a mark, and provided that such use is confined to the purposes of identification or information and is not likely to mislead the public as to the origin of the goods or services. Third parties are also able to use a mark to publicize, including the use of comparative advertising, to offer for sale or to advertise the existence or availability of lawfully marked goods or services, or to advertise the compatibility or suitability of spare parts or accessories that may be used with goods bearing the registered mark, provided that such use is made in good faith, is confined to the purpose of informing the public, and is not likely to mislead or cause confusion as to the corporate'origin of goods or services concerned.

Filing Requirements

The documents required for applications for registration are: (1) petition or application that must include the following information: (a) trademark or service mark to be registered; (b) name and address of applicant; (c) nationality of the applicant, and if it is a legal entity, place of incorporation; (d) statement of the trademark to be registered, where such trademark is denominative or device mark; (e) list of the specific goods or services to be protected and international class; and (f) signature of the applicant or hisher grantee and of a lawyer; (2) if the applicant does not live in Ecuador, a Power of Attorney duly legalized in the Consulate of Ecuador, or by Apostille; (3) receipt of the official fee which is $54 in U.S. dollars; and (4) when claiming priority, a certified copy of the first application filed overseas. An electrotype is not required. Prints or copies of the mark are allowed.

Evaluation & Review

The competent national office examines the application for compliance with the formal requirements within 15 days of the filing date of the application. If the application is not acceptable as to form, the national office informs the applicant so that he may meet the said requirements within a period of 60 days following the date of notification. If, on the expiry of the period mentioned, the applicant has not complied with the requirements stated, the application is considered abandoned, and its place in the order of precedence is lost. If the application for registration meets the requirements for form, the national office orders publication on the Official Gazette. Publication on the Intellectual Property Gazette is then generally begun within the next 30 days. Starting from the publication date, third parties have a 30-workingday term to file oppositions. However, if no oppositions are filed, the office must undertake an examination for registrability, thereafter granting or denying registration based on the results of the examination.

Duration

A registration is granted for 10 years and may be renewed for successive 10-year periods. Registration must be renewed within six months prior to expiry, or during the grace period of six months following the expiration date of registration. In order to renew the registration, the owner must file a renewal application. Renewal does not require proof of trademark use and is granted automatically on the same terms as the original registration. The renewal is granted for 10 years. If a trademark owner fails to renew hislher registration, the trademark is deemed lapsed or abandoned.

Use

The use requirements are satisfied when the goods or services that the mark distinguishes have been placed, or are available, on the market under the mark, in the normally appropriate quantity and manner. A mark is also considered used when it exclusively distinguishes goods that are exported from any of the member countries of the Andean Community. A mark used by a licensee or any third party authorized by the mark owner also constitutes use if the license andlor authorization for such use has been registered at the Trademark Office. The use on a different product or service does not count as use. Use of a mark in a different form from the original registration may constitute use only to the extent that there is no material deviation in details or elements so as to alter its distinctive character. If a mark owner stops its use for three consecutive years, a third party may file a cancellation action for nonuse.

Domain Names

There is no national legislation providing for rights in domain names or their protection. The trademark law provides protection only to well-known distinctive marks that appear in relation to domain names. Therefore, if a mark has been improperly registered as a domain name in a member country of the Andean Community (Ecuador, Peru, Bolivia, Venezuela, and Colombia), as being part of a domain name or electronic mail address by an unauthorized third party, the competent national authority will, at the request of the owner or legitimate holder of the wellknown mark, order the cancellation or amendment of the registration of the domain name or electronic mail address in so far as the use of that name or address may be liable to confuse consumers.

Enforcement

Trademark 'owners may file civil, administrative, andlor criminal actions as follows. Administrative Actions "Tutela Administrativa": This procedure is done before the Intellectual Property Institute, requesting from the authority the inspection and seizure of the products or any other measure to stop the infringement. A hearing is held whereby the parties may sign a settlement agreement that may include indemnification for the trademark owner. If there is no such agreement, the authority will issue a resolution. If the resolution indicates a determination that infringement occurred, the authority will establish a fine to be paid by the infringer. This resolution may be appealed by the alleged infringer. Civil Actions Unfair competition is considered illicit or unlawful, and according to the Industrial Property Protection Paris Agreement signed in March 1883 and to which Ecuador is a signatory, "[tlhe Union countries are obligated to ensure nationals of the Union countries an efficient protection against unfair competition." This agreement allocates to Ecuador the obligation to protect the affected mark owner from "every act of unfair competition contrary to the honest uses on industrial or commercial business."' In accordance with this rule, Article 284 of the current Intellectual Property Law considers as unfair competition "every fact, act or practice contrary to the honest uses or customs in the economic activities ties de~elopment."T~h is rule defines honest (or good-faith) uses as those that are consistent with "the criteria of the national commerce." Article 285 of the same Law specifically identifies certain forms of unfair competition, including acts capable of creating confusion as to the source establishment, the products or services, or the commercial or industrial activity of the competitor; and any act capable of diluting the intangible value or reputation of the company; and, in general, any commercial act considered dishonest. Decision 486 of the Andean Community and its Article 258 parallel the concepts pertaining to unfair competition in the Paris Agreement. According to this, the unfair competition is regulated in our country by two International Treaties and by the Intellectual Property Law. This decision mentioned considers as unfair competition, "Any act a) capable of [creating] confusion, [in] any way, in respect to the establishment, the products or the competitor industrial or commercial activity, the unreal confirmations [untrue assertions], in the commerce exercise, capable of discrediting the establishment, products or the competitor, or industrial or commercial activity; c) The indications or confirmations that, in the exercise of commerce could induct the public to make a mistake regarding the nature, manufacture, characteristics, use, aptitude or the quantity of the product^."^ This authority enables aggrieved parties to initiate legal actions to obtain orders from a civil judge to suspend immediately all kinds of publicity, act, or dishonest practice that can cause economic or commercial damage to the company; and to obtain economic reimbursement or damages resulting from the acts of unfair competition. Criminal Action Criminal penalties to punish acts of unfair competition as criminal infringements are also included in the Intellectual Property Law terms and the Criminal Code and Customs Legislation. If the infringer is importing the product which is distinguished by a mark, it is possible to obtain border control measures to avoid the entry of the infringing product to the national market.