ECUADOR. Intellectual Property Appeal Board deemed proving continuous and good faith use is mandatory in order to claim previous rights over a trade name.
On August 27, 2020, the Intellectual Property Appeal Board in Ecuador confirmed a decision that rejected the registration of LA RADIO REDONDA + LOGO in International Class 38. Applicant, RADIODIFUSORA PARAISO RADIALPA SA, failed to prove continuous and good faith use of a confusingly similar trade name.
La Red Onda FM vs La Radio Redonda
The Intellectual Property Appeal Board (Appeal Board) in Ecuador on August 27, 2020, confirmed a decision rejecting the registration of LA RADIO REDONDA + LOGO in International Class 38. The Appeal Board rejected the mark because the applicant Radiodifusora Paraiso Radialpa SA failed to prove continuous and good faith use of an identical trade name.
On November 5, 2015, an application of the mark LA RADIO REDONDA + LOGO was filed in Ecuador to cover services in International Class 38. Further to its publication, one of Ecuador’s iconic sports radio stations, RADIO LA RED, owned by Jornadas Deportivas Alfonso Laso Cia. Ltda., filed an opposition based on its previously registered trademarks, including RADIO LA RED and LA RED ONDA FM, in International Classes 38 and 41. The opponent claimed that the applied-for mark LA RADIO REDONDA lacked distinctiveness as it was a combination of their mark RADIO LA RED with the descriptive word ONDA—which means wave—when used in connection with radio broadcasting services. The opposition was initially rejected and the application for RADIO REDONDA + LOGO was granted registration.
Jornadas Deportivas Alfonso Laso Cia. Ltda. filed an appeal, and the Appeal Board reversed the decision issued by the Trademark Office, rejecting the registration of LA RADIO REDONDA + LOGO in a decision dated May 30, 2018.
The applicant filed a petition to review before the same Appeal Board. It alleged that the Appeal Board did not analyze all the facts and evidence presented in the proceedings, in particular that this new application was an extension of prior rights derived from use of LA RADIO REDONDA as a trade name since 2015. According to the applicable law (Article 191 of Decision 486 of the Andean Community and Article 416 of the New Trademark Law in Ecuador), exclusive rights over trade names are acquired only with a public, continuous, and good faith use in commerce.
According to the Appeal Board findings, the evidence submitted by the applicant to prove good faith use was not deemed sufficient and lacked continuity, and therefore, the argument of a previous exclusive right over a trade name as an extension in order to obtain registration of a trademark was not accepted. Consequently, and as a final decision, registration of LA RADIO REDONDA + LOGO was revoked.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
This article was first published by the International Trademark Association on inta.org
Author: Monica Wolf de Camhi, Wolf Mendez Abogados Asociados, Bogotá, Colombia.
INTA Bulletins—Latin America Subcommittee
Verifier: Alejandro Ponce-Villacis, Quevedo & Ponce, Quito, Ecuador.
INTA Bulletins—Latin America Subcommittee
