Telefonica v. Telefonica Ecuaphone

In an unprecedented case in Ecuador, TELEFONICA from Spain files suit to change the company name of TELEFONICA S.A. ECUAPHONE. The IP Office ordered the Companies’ Superintendence and the defendant to cease use of the name and set a deadline to adopt a new company name. On the risk of being terminated, the company had to amend its charter of incorporation and since May 19, 2010 is called Ecuaphone S.A.

Bermeo represented the Spanish phone company Telefonica S.A. against a local company named Telefónica S.A. Ecuaphone.

Per article 293 of the Ecuadorian Intellectual property Law:

The owner of a trademark, trade name or plant variety that verifies that the Companies’ or Banks’ Superintendence has approved the adoption of a company name that includes registered marks, may request the Intellectual Property Agency the cease of use of such corporate name to eliminate all risks of confusion or illegal use of the registered mark.

This is the first case in Ecuador in which the Intellectual Property Office asks the Companies’ Superintendence to change the name of a company. The case was decided in favor of the plaintiff in first instance, and the Appeal Board of the IP Office affirmed the ruling.

The Board agreed with the allegations that the use in commerce of the term TELEFONICA in the name of a company providing related services would cause confusion with our client’s marks. According to the law, the two agencies should work together and connect their databases to protect IP rights, however, for the first time the IP Office issued an order to the Companies’ Superintendence to protect a third party’s trademark from being used as a company name.

Matter was handled by partner Rodrigo Bermeo R. and Senior Counsel Ana Lucia Merchán in both first instance and appeal.

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