IP

Infringement and Litigation

 

Our practice covers all the stages of oppositions, cancellation proceedings (on grounds of lack of use, famous trademark, vulgarization of a mark, annulments of illegal registrations), arbitration, out-of court settlements, unfair competition. We have a very good rate of success due to high expertise, great research and strict focus on the issues.

In infringement cases we are known to litigate vigorously until the illegal use stops or the counterfeit goods are seized. Some of the actions are either sending cease and desist letters, injunctive relief, border protection actions, or filing administrative, civil or criminal complaints. 

Maintenance and Renewals

 

A mark is protected for ten years from the date of registration, and it may be renewed indefinitely. A renewal application should be filed from six months before the expiration date or during the grace period of six months after is expiration.

 

We handle applications, recording of assignments, mergers, licenses, agreements, changes of name, changes of address, security interests, registry updates and renewals. 

 

We provide legal counseling for Intellectual Property transactions such as licensing, franchising, or distribution agreements. We also assist in the negotiation with the local parties, investigations, and recording agreements at the official registers.

Opposition and Examination

 

After a mark is published in the IP Gazette, third parties have 30 business day to file an opposition. Oppositions may be filed on several grounds, including another trademark in the Andean Community. An exam will be conducted regardless of the filing of any opposition. The IP Office may cite any prior marks or reject a registration ex officio on absolute or relative grounds.  

 

After a decision is issued, the matter may be submitted for review before the same Authority. If an adverse decision is issued, then an appeal may be filed before the IP Committee and their decision may also be submitted for review before the same Authority. At any point, the matter may be taken to the Contentious courts for a judicial review.

Trademark Application

Ecuador follows the latest edition of the Nice Classification of goods and services, protecting the class headings is possible. Since there are no multi-class applications, a single application needs to be filed per class. Priority may be claimed within six months of the first application.

An application may be filed immediately, and the documentation may be completed afterwards.

Formal examination

The IP Office will check that the application is correctly filed, that the goods/services are correctly classified and that the documentation is complete.

An office action will be issued requesing the PoA, Priority document, or to make any corrections or amendments. The deadline is of 60 days from the notification date, and one extension may be filed.

Once the application is complete, it will proceed to publication in the Intellectual Property Gazette.

Filing Requirements
  • Official fee
  • Logo (.png or .jpg, min 250x250 pixels)
  • Description of goods/services
  • Full name and address of Applicant
  • Power of Attorney legalized with Apostille
    - Companies must provide proof of legal status
    - One PoA per applicant is enough
  • Priority: certified copy of the foreign application

Trademark clearance and watch services

A prior search of the register is advisable to avoid office actions or oppositions. In some cases investigations of prior use, trade name and business name searches are also advisable.

Our software and proprietary databases permit us to conduct our trademark searches and watch services in-house. Results are carefully studied to provide the clients only with relevant information. 

The search report we provide includes trademark availability opinion and chances of success.  Our service includes follow up and suggestions to enhance the chances of registration.