PRELIMINARY NOTE:

In order to stress differences between former Decision 344 and now enacted Decision 486, phrases and words in "script" refer to modifications or new matters included in the new Decision 486 of the Cartagena Agreement.

Law

Intellectual Property Law, effective May 19, 1998; Regulations to Intellectual Property Law, enacted in February 1990 R.O. # 120. Decision 486 of the Cartagena Agreement, enacted on December 1^st, 2000, Decision 345 of the Cartagena Agreement; Regulations for the protection of vegetal varieties, effective July 20, 1994; Decision 291 of the Cartagena Agreement, dealing with foreign investments and licensing, Decree No. 415-93: Rules for applying norms to foreign investments, effective January 13, 1993. Law No. 46-97 for the promotion and guaranty of investments, effective December 19, 1997. Matters not covered by Decisions 486 and 345 continue to be regulated by the domestic laws of Ecuador. 

Transitional Provisions

Pending applications at the Patent Office shall be handled according to the new Intellectual Property Law. Any industrial property right validly granted should be ruled according to the legislation in force at the granting date, except the validity of registrations, which has to be modified in accordance with Decision 486. Regarding “patents” and “trademarks” no modification in the validity term was stated.

The Supreme Court shall organize the district courts for intellectual property cases.  Meanwhile, intellectual property district courts are established, the Contentious and Administrative Courts are in charge of Intellectual Property cases, except the injunction actions, which remain under competence of civil judges.

Conventions

Cartagena Agreement. Trade Related Intellectual Property Rights (TRIP’s). Paris Convention for the Protection of Industrial Property.  Patent Cooperation Treaty (PCT).

Definitions

Trademarks/services marks: any sign capable to distinguish products or services in the market. May be registered as trademarks signs, which are susceptible of graphic representation (eliminated “sufficiently distinctive”). Commercial slogans may also be registered as trademarks, provided they do not contain allusions to similar products or trademarks or expressions that may cause damage to said products or trademarks.

Slogans: 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.

Collective Mark: any trademark that serves to distinguish the origin or any other shared characteristic of goods or services belonging to different businesses, which use such a sign under the control of the registrant.

Associations of producers, manufacturers, service providers; organizations; or any legally conformed group of people may apply for a collective mark. Collective marks may be assigned to third parties, as long as said association, organization or group of people authorizes the assignment. Use of the collective mark is reserved for members of the association, organization or group of people.

Commercial Name: a sign or denomination, which identifies a business or economic activity of a natural or juridical person.  A commercial name is independent of the denomination or juridical name used by artificial persons; therefore, they can coexist. (Decision 486, Art. 190)

Registration is not mandatory. The right of exclusive use of a commercial 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.

Distinctive Appearance (Trade-dress): any assembly of characteristic colors, forms, presentations, structures and designs and particularity of a commercial establishment, which identifies and distinguishes the presentation of services or sale of products. Distinctive appearances shall be protected in the same way as the commercial names. (Intellectual Property Law, Art. 235)

Geographical Indication: 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 Trademarks Office may declare the protection of geographic indications from other countries, when the public authorities or a person with legitimate interest, submit the applications. The geographic indications must have been declared as such in their origin countries.

The geographic indications protected in other countries shall be considered common or generic in order to distinguish some product, while such protection subsists.

Who may apply

Any person, natural or juridical, national or foreign, has the right to identify, by means of a mark, those goods or services produced by him, and to register that mark.

The first applicant of a mark is entitled to its registration.  A prior registrant may oppose or apply to cancel an identical or similar mark.  The applications accepted for registration in one Member Country of the Cartagena Agreement have a priority of six months.

What Can Be Registered

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.

Among others, sounds and odors may be registered as a trademark, as well as combination of colors or a single color delimited by a specific form. (Decision 486, Art. 134)

Not Registrable

Symbols may not be registered as trademarks if they:

1. Fail to meet the definition of a trademark;

2. Consist of solely of characteristics imposed by the nature of the use of the goods or services in question;

3. Consist of 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 vegetal 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.

Symbols may not be registered as trademarks if, 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 mistake, 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.

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

Geographical Indication: It cannot be declared as geographical indications those which:

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. Common or generic words.

Famous marks enjoy levels of special protection, even if not locally registered.

The registrant of a widely known mark in Ecuador, in any Andean Country or in the international trade, may take actions against pirate applications.  This action shall apply, regardless the class of goods or services, both if the symbol is used for the same goods and services as those protected by the widely known trademark, or if used for different goods or services.

The owner of a notorious mark shall act against who use 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 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.

Classification

Nice International Classification is used, but each application must be filed with express indication of the products or services for which the mark is to be registered. Therefore, inclusion of the phrase “and all other goods/services covered by the class” is no longer allowed. (Decision 486, Art. 139).  A separate application for each desired class is necessary.

Collective Marks  

Associations of producers, manufacturers, providers of services, organizations, or any legally conformed group may apply for a collective mark.

The application must be accompanied by:

1. Copy of the statutes of the association, organization or group of people which is seeking to register the collective mark;

2. Copy of the rules that the applicant seeking the collective mark will use to regulate the goods and services;

3. Description of the conditions and manner in which the collective mark will be used,

4. A list of the members.

Certification Marks

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)

Documents Required

1. Power of Attorney duly legalized up to the Ecuadorian Consulate.  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.

2. 10 prints of the mark. (this is not for word marks)

3. When claiming priority, application must be filed within six months as from the first application date, and a certified copy of the prior application, must be filed within 60 working days. Documents not in Spanish must be officially translated. (can be done locally).

4. Indication of goods and services to be covered (International Classification).

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

1. Documents proving the existence and representation of the legal entity that is filing the application;

2. A clear and complete description of the mark.

3. A copy of the first slogan (or trademark) application filed in any Member Country of the Andean Group of the Paris Convention, if priority is claimed;

4. Labels of the slogan, when containing graphic elements

Priority

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, as from the date on which the products or services with the respective trademark would have been exhibited for the first time.

Procedure

Once the application is admitted, the Trademarks Office shall examine formal aspects within fifteen working days following its deposit. If the application does not comply with the formal requirements, the petitioner shall be given a term of sixty days to fulfill requirements.

Once it has been determined that the application fulfils the formal requirements of the law, a summary of the approved application is published in the Official Gazette for oppositions.

Amendment

Opposition

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.

The opponent has of the Member Country where the opposition is lodged. If the opponent does not have a prior registration or application, he must credit actual interest in the market through local deposit of the mark when lodging the opposition. (Decision 486,Art. 147)

The applicants are serviced with oppositions for a thirty working days period, extendable once, in order to submit proofs to support the opposition. (Decision 486, Art. 148)

Effect of Registration

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

Duration and Renewal

The trademark registration term is 10 years as from the date of registration, renewable for like periods.  Proof of use is not necessary for renewal purposes.
Documents for renewal: Legalized Power of Attorney.

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

Commercial Names: The commercial names are granted by a renewable 10-years period. As per the former legislation, they did not have a due date. Transitional Provisions of Decision 486 stated that the validity of registrations has to be modified according to the new provisions, therefore the validity term regarding already granted Commercial Names has to be limited to 10 years as from the registration date.

Use and Cancellation

A mark used by a licensee is deemed used by the owner if the license agreement is recorded. Upon request, the Trademarks Office may 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 mean of relief 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 proofs, and the trademark registrant has burden to prove it.  Acts of God and unforeseen circumstances are fair causes 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 is widely 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.

Assignment

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 up to the Ecuadorian Consulate;

Nullity

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

1. Issued contrary to the law;

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

3. Obtained with bad faith.

Limitation of action.- 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)

Limitation of Action

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)

Claiming actions (Decision 486, Art. 237)

Infringement

Civil, administrative and criminal actions can be taken in case of violation of intellectual property rights. A demand may request for: Ceasing of violation 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 and 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 as from the date in which the owner learned about the infringement, or 5 years as from the last date of the infringement. (Decision 486, Arts. 238-244)

Preliminary measures, 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 demand must follow the preliminary measure within the next 10 days, otherwise such preliminary measure will be cancelled. (Decision 486, Arts. 245-249)

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