Trademarks / services marks

Any sign capable to distinguish products or services in the market and which is susceptible of graphic representation may be registered as a trademark. Commercial slogans may also be registered as trademarks, provided they do not contain allusions to similar products, trademarks or expressions that may cause damage to said products or trademarks.

Word, phrase, or legend used to complement a trademark. The provisions related to the Trademarks shall be applied. A commercial slogan must be transferred together with the trademark with which it is associated and its legitimacy will be linked to that mark.

Is a sign used in some products or services which quality or other characteristics have been certified by the owner of the trademark. (Decision 486, Art. 185)

A sign or wording which identifies a business or economic activity. A trade name is independent of the wording or corporate name used by companies, therefore, they can coexist. (Decision 486, Art. 190)Registration is not mandatory, however it is suggested. The right of exclusive use of a trade name derives from its continuous bona fide public use for six months or more. The commercial names may be registered at the Trademarks Office, and such registry constitutes a presumption of property in favor of its titleholder.

Any assembly of characteristic colors, forms, presentations, structures and designs, and particularity of a commercial establishment which identifies and distinguishes the provision of services or sale of products. Trade dresses shall be protected in the same way as the trade names. (Intellectual Property Law, Art. 235)

Identifies a product as original from the territory of a country, a region or locality in that territory, when a determined quality, reputation or other characteristic of the product is basically attributable to its geographic origin, including the natural and human factors.It is prohibited to use misleading geographical indications, or when their use may induce to confusion. (Decision 486, Art. 222)The Ecuadorian Trademark Office may declare the protection of geographic indications from other countries. Geographic indications must have been declared as such in their countries of origin.Geographic indications protected in other countries shall be considered common or generic in order to distinguish some product, while such protection subsists.

Any person, natural or juridical, national or foreign, has the right to identify, by means of a mark, those goods or services produced, and to register that mark.The first applicant of a mark is entitled to its registration (Ecuador is a “first-to-file” country).  A prior registrant may oppose or request the cancellation of an identical or similar mark.  The applications accepted for registration in one Member Country of the Cartagena Agreement have a priority of six months.The applications validly submitted in a Member Country of the World Trade Organization, the Andean Community, the Paris Convention, or another treaty or convention of which Ecuador would be a part, have a six months priority in Ecuador. Such application cannot refer to products or services different or additional to those included in the first application.

The symbols that are discernible, sufficiently distinctive, and capable of graphic representation can be registered as marks.  Commercial slogans (i.e., the word, phrase, or legends used to complement a registered trademark) are also registrable. Sounds, textures and odors may be registered as a trademarks, as well as combination of colors or a single color delimited by a specific form. (Decision 486, Art. 134)

Identifies a product as original from the territory of a country, a region or locality in that territory, when a determined quality, reputation or other characteristic of the product is basically attributable to its geographic origin, including the natural and human factors.It is prohibited to use misleading geographical indications, or when their use may induce to confusion. (Decision 486, Art. 222)The Ecuadorian Trademark Office may declare the protection of geographic indications from other countries. Geographic indications must have been declared as such in their countries of origin.Geographic indications protected in other countries shall be considered common or generic in order to distinguish some product, while such protection subsists.

Symbols may not be registered as trademarks if they:

1. Fail to meet the definition of a trademark;
2. Consist solely of characteristics imposed by the nature of the use of the goods or services in question;
3. Consist solely of forms that improve the functioning or art, or enhance or change the intrinsic value, of the goods or services;
4. Consist of solely a symbol or name that serves in commercial use to identify or describe the type, quality, quantity, use, value, origin, production date, or other facts, characteristics or information regarding goods or services for which they are used;
5. Consist of solely a symbol or name that, in common speech or in commercial use in the country, is conventionally used to designate goods or services for which it is used;
6. Consist of a color that stands alone without being incorporated into a specific form;
7. Are contrary to law, morals, public order or accepted standards of behavior;
8. May deceive commercial entities or the general public, particularly with regard to the origin, nature, method of manufacture, characteristics, qualities or usefulness of concerned goods or services;
9. Reproduce or imitate a protected name of origin, consist of a local or foreign geographical name that may cause mistake when used on or in connection with goods or services; or which may deceive the public regarding the origin, source, qualities or characteristics of concerned goods;
10. Reproduce or imitate the name, coat of arms, flags or other insignia, acronyms, or titles or abbreviations of titles of any officially recognized state or international organization, without permission from the state or international organization in question; in any case, such symbols may only be registered if they are subordinated to the principal distinctive mark;
11. Constituted by signs that reproduce or imitate technical standards, unless the competent domestic agency in charge of technical and quality standards is the applicant;
12. Reproduce coins or bills of legal tender within the national territory, or of any country, or titles, bonds, and other business documents, seals, stamps, tax stamps.
13. Consist in the denomination of a protected plant variety to be obtained in the country or abroad, or of a denomination essentially derived from it; unless the application is made by the same titleholder.

Note: When the marks are not intrinsically capable to distinguish the pertinent products or services, the National Office may allow its registration if a secondary meaning has been acquired through use to identify the applicant's products or services. (Decision 486, Art. 135)

Symbols may not be registered as trademarks with respect to third party rights, if they:

1. Are identical to, or sufficiently resemble so as to cause mistake, a mark for which registration has been applied or registered by a third party, for the same goods or services, or for goods or services for which the use of the mark may cause mistake;
2. Are identical to or resemble a protected commercial name, in accordance with domestic law in the Member Countries of the Andean Group, which under the circumstances may cause mistake;
3. Are identical or similar to a registered commercial slogan, which under the circumstances may cause mistake;
4. Are identical to a mark, or sufficiently resemble to cause confusion, and the applicant is, or was, a distributor or expressly authorized person by the owner of the protected sign in any Andean or foreign country.
5. Constitute the complete or partial reproduction, imitation, translation, or transcription of a distinctive symbol widely known in the country in which the registration is being applied, or in countries from the area or international trading partners and provide reciprocity, by interested sectors and which are owned by a third party.  This prohibition shall apply, regardless of the classification of goods or services. Are not sufficiently similar so as to cause confusion with a widely-known trademark, regardless of the class of goods or services for which registration is being applied;
6. Consist of the complete name, surname, pseudonym, signature, caricature, or portrait of a natural person other than the petitioner or which is identified by the general public with a person other than the petitioner, except with the consent of that person or his heirs;
7. Consist of a sign that affects the identity or prestige of an artificial person.
8. Consist of the name of an indigenous, Afro-American or local community, or the denominations, words, letters used to distinguish their products or services, except if an express authorization is submitted.
9. Consist of titles of literary, artistic, or scientific works or fictitious or symbolic characters whose copyright is owned by a third party, without his or her consent.

The Trademarks Office can reject a trademark application if it consolidates or encourages an unfair competition act. (Decision 486, Art. 137)

Commercial slogans that contain references to similar goods or marks, or wording that may cause damage to said products or marks, will not be registered.

Geographical Indication: Geographical indications cannot be registered if they:

1. Are not adjusted to the definition of Geographical Indication;
2. Are contrary to the moral or to the public order or may deceive the public
3. Consist in common or generic words.

Famous or well-known marks enjoy special levels of protection, even if not locally registered.

The owner of a widely known mark in Ecuador, in any Andean Country or in the international trade, may take actions against infringing applications, regardless the class of goods or services for which it is filed.

The owner of a notorious mark shall act against anyone who uses it, even without commercial purpose, if such use causes confusion, damages the distinctive character of the notorious mark or gives an unfair advantage to a third party. (Decision 486, Art. 226)

When a notorious mark is registered as a domain name, or e-mail address in any Member Country by a third party, the national authority will order the cancellation or modification of such a record if it causes confusion, damages the distinctive character of the notorious mark or gives an unfair advantage to a third party. (Decision 486, Art. 233)

Cancellation is possible as well, upon request of the legitimate owner, when the given mark is identical or similar to a trademark that has been widely known according to the enforced law at the time when the application for registration was deposited.

Ecuador uses the International Classification of Products and Services of the Nice Agreement. Each application must be filed with express indication of the products or services for which the mark is to be registered. There are no multi-class applications,  a separate application for each class is necessary.

• Power of Attorney legalized with Apostille. If the applicant is a corporation, it must provide proof of its status as a legal entity. One power is enough for one or more simultaneous or further applications.
• Sample of the design mark, preferably in .png or ,jpg format at minimum 250x250 pixels.
• Description of the goods or services to be covered, per the International Classification of Nice.
• Claiming Priority: Local application must be filed within six months as from the first application date.

• Certified copy of the foreign application must be filed within 60 working days.
• Documents not in Spanish must be officially translated. (can be done locally).

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The application for registration of a commercial slogan must specify the registered or applied trademark that it will be used with. The following is required:

1. Labels of the slogan, when containing graphic elements.
2. A copy of the first slogan (or trademark) application filed in any Member Country of the Andean Group or the Paris Convention, if priority is claimed;

• Copy of the statutes of the association, organization or group of people which is seeking to register the collective mark;
• Copy of the rules and regulation that the applicant seeking the collective mark will use to regulate the goods and services;
• Description of the conditions and manner in which the collective mark will be used,
• A list of the members.

The first application for registration of a trademark validly submitted in a member country of the World Trade Organization, the Andean Community or the Paris Convention for the Protection of Industrial Property confers to the applicant a priority of six months. Certified copy of the priority document has to be submitted within 3 months after the application date.

Priority is given as well for the use of a trademark in an exposition officially recognized, held in any country, from the date on which the products or services with the mark were exhibited for the first time.

Once the application is filed, the Trademark Office shall examine it for completeness and compliance with formal aspects within fifteen business days. If the application does not comply with the formal requirements, an office action is issued and the petitioner has a term of sixty days to fulfill requirements.

Once it is admitted, an extract published in the monthly Official Gazette for oppositions. An extension for the opposition deadline may be filed once.

Once the opposition deadline of 30 business days expires, the Trademarks Office decides over the oppositions and the registrability exam to concede or reject the registration of the mark.

The applicant may amend any material error at any time before granting, only with relation to secondary aspects.  Goods or services within the same class can be eliminated or restricted. In any case the modification may imply a change in the sign or a broad scope of goods or services. The owner has the right to limit to part of the products or services covered by a trademark registration.

Within thirty working days following the publication, any person with legitimate interest may oppose. An additional 30 days period is granted to the opponent to submit proofs in order to support the opposition. (Decision 486, Art. 146)

The oppositions can be filed on the grounds of registered marks, famous foreign marks (even if they are not registered), and marks that are registered in a Member Country.

If filing an Andean Opposition (based on a mark on another member country) the opponent must prove actual interest in the market through local application of the mark at the time of filing the opposition. (Decision 486,Art. 147)

Registration of a trademark confers the exclusive right to use the mark.

International exhaustion of the trademark rights, especially when the packages and containers are not modified. (Decision 486, Art. 158)

The trade name shall be protected without the obligation to register it. The right of exclusive use of a trade name derives from its continuous bona fide public use in the trade, for six months or more.

The trademark registration term is 10 years from the date of registration, renewable for like periods.  Proof of use is not necessary for renewal purposes.

Geographical Indication: exclusive rights are determined by the subsistence of the conditions, which motivated the registration.

Trade Names: The trade names are granted by a renewable 10-year period. Old trade names did not have an expiration date, however Transitional Provisions of Decision 486 stated that the validity of registrations has to be modified according to the new provisions, therefore they all expired December 1st, 2010 (June 1st, 2011 including grace period) if no renewal was filed.

A mark used by a licensee is deemed used by the owner if the license agreement is recorded. An action can be filed to request to the Trademark Office to cancel a mark that has not been used in at least one Member Country of the Andean Community within the three consecutive years prior to the date in which the cancellation action is brought.  The cancellation of the trademark for lack of use in commerce may also be started as a defense following proceedings for infringement, oppositions and nullity actions when those proceedings are based on a trademark that has not been used.

It is possible to ask for a partial cancellation of a trademark, regarding the products or services covered by the registration that are not in use. (Decision 486, Art. 165)

Use of the trademark must be supported by evidence, and the trademark owner has the burden of proof.  Acts of God and unforeseen circumstances are fair excuses for the failure to use a trademark.

In addition, the Trademark Office will cancel the mark, upon request of the legitimate owner, when it is identical or similar to a mark that was well-known according to the law in effect, at the time the application was filed for registration.

When a mark registered in any Member Country is not used, the import of goods or services coming from another Member Country of the Andean Pact, identified with that mark, will be tolerated.

Assignments must be recorded at the Trademark Office.

Documents required:

· Power of Attorney and a Deed of Assignment executed by assignor and assignee, both duly legalized with Apostille or up to the Ecuadorian Consulate.

A license agreement must be recorded at the Trademark Office. Lack of recordal will imply that the owner will not benefit from uses performed by a non-registered licensee.

Related article: Trademark Licensing in Ecuador

The Industrial Property Office may decide, either ex officio or upon petition, that a trademark is invalid prior to a hearing with the interested parties, when the trademark registration was:

1. Illegally granted;

2. Issued on the grounds of data or documents that were declared false or inexact by the Trademark Office.

3. Obtained with bad faith.

Statute of Limitations.- An action for annulment may be brought within three (3) years at the administrative stage,  or five years (5) before a civil judge. (Decision 486, Art. 172)

When a party damaging another entitled party applies or registers a mark, the damaged party can claim its right and may ask to be recognized as a co-applicant or co-owner of the right.

Civil, administrative and criminal actions

These actions can be brought in case of violation of intellectual property rights. A plaintiff  may request: ceasing of infringing acts; seizure of goods or other objects involved in the transgression, withdrawal from commercial channels of merchandise, as well as its destruction, seizure of tools and means used for the transgression, the compensation for court costs, damages and torts, the repairing in any other form of the effects generated by the violation.

The right to demand against an infringement lapses 2 years from the date in which the owner learned about the infringement, or 5 years from the last date of the infringement. (Decision 486, Arts. 238-244)

Preliminary injunctions: The judges are empowered to order: preliminary injunction measures which would be needed for the urgent protection of intellectual property rights and especially the immediate ceasing of illegal activities, the suspension of the illegal activity, including the use, exploitation, sale, offering for sale, imports or exports; and any other measure to stop the violation.

A formal complaint must follow the request for preliminary injunctions within the next 10 days, otherwise the injunction will be cancelled, and damages may be awarded. (Decision 486, Arts. 245-249)

In cases alleging infringement of a patented process, the burden of proof rests upon the defendant.

Upon request of a trademark owner suspecting that an import or export infringes prior IP rights, the competent national authority may stop such imports or exports in Customs. A previous inspection will be ordered. A formal complaint must follow such suspension order within the next 10 days; otherwise this suspension will be cancelled. (Decision 486, Art. 250)