Experience

Consumers can determine the source of a product by the way distinctive elements are consistently placed in the goods. While caselaw develops for protection of these non-traditional marks, brand owners struggle to protect them in developing countries. Read on to find out if Ecuador has a position on protecting position marks.

Los consumidores pueden determinar el origen empresarial de un producto por la forma en la que ciertos elementos distintivos han sido utilizados consistentemente y la posición en el producto. Al desarrollarse la jurisprudencia sobre marcas no tradicionales, los propietarios de estas marcas tienen problemas en obtener protección correcta. ¿Cuál es la posición del Ecuador sobre marcas de posición?

Ecuadorian IP Office’s position on position marks.

Brands have realized that being conventional is not enough, at least not anymore. As the market becomes more and more competitive, unique ways to identify the commercial origin of products or services have evolved. Non-traditional marks such as colors, patterns, position marks, sounds, movements, multimedia, holograms, or scents, struggle at IP Offices throughout the world with longer examinations and not being able to obtain proper trademark protection.

Position marks, for example, distinguish the origin of products as they have an identical element with constant proportions that appears in the same position or location of a product. The product however may change or redesign itself, but brand owners only claim protection over the distinctive element which is common through different products. 

Per the World Intellectual Property Organization, position marks may be required that matter for which protection is not claimed, be represented in broken or dotted lines. This will serve to illustrate how the consumer is presented with the marks. These marks are quite common in the fashion industry and consist of stripes, colored shapes, labels, which have been graphically represented as follows:

In Ecuador, there are no clear regulations on how to represent non-traditional marks, however, they are protected by the general rules as long as they are able to distinguish a product or service and they can be graphically represented.  

In a recent decision, the Ecuadorian IP Office had to decide whether an application by LUI YANGXIN to register ONEMIX AND STRIPE to protect clothing footwear and headgear, was confusingly similar to PUMA SE’s STRIPE WITH WAVE design.

Initially, the IP Office rejected the opposition and granted the registration as it considered that there were enough differences between the words PUMA and ONEMIX. PUMA SE filed an appeal and argued that the comparison needed to be made from the consumer’s perspective and consider its figurative elements, as the opposition was filed based on figurative marks only. PUMA claimed that the IP Office needs to consider the way the products are used in the market, meaning that both brands protect shoes, and both bear a similar stripe located in the outside face of the products:

Caption: Images filed by Opponent to illustrate the similarities in the way products are shown to the consumers.

The Appeal Board concluded that the main element of the applied mark is the graphic element. They analyzed that from the consumer’s perspective, in cases of clothing and footwear, the products are displayed to the public in stores, where they may try the products and bring them to the cashier without verbally asking for the product. Thus, regardless of the word ONEMIX in the mark, the main element was graphic. It finally concluded that the traces of the designs follow the same line, wide in the bottom left and narrow at the top right in the shape of a wave. When considering the type of products, the visual appearance of the mark is more relevant and is confusingly similar to PUMA’s graphic trademarks. 

With this analysis we believe that the IP Office is on the right track to properly protect position marks as it considers all the elements and how they are portrayed to the consumers in the market. We expect that precedents for protection of position marks develop in the region and these tools are better available to brand owners. Contact us for assistance in preparing applications to protect position marks or non-traditional marks.

 

Rodrigo Bermeo Andrade

Partner

The information provided herein does not, and is not intended to, constitute legal advice; instead, all information, content, and materials available are for general informational purposes only.  Contact us and we will be pleased to provide advice with respect to any particular legal matter.