A trademark owner has the right to request to the TM Office to change a company name which was approved by the Companies' Superintendence in violation of its IP rights. In an unprecedented case in Ecuador, TELEFONICA from Spain, represented by Bermeo & Bermeo, brought suit against TELEFONICA ECUAPHONE to have its name changed. On the risk of being being terminated, the company had to amended its charter of incorporation and is now called Ecuaphone S.A. since May 19, 2010.

We represented the Spanish phone company Telefonica against a local company named Telefónica Ecuaphone S.A. This is the first case in Ecuador in which the Intellectual Property Office asks the Companies’ Superintendence to change the name of a company. We won the case in first instance, and the Appeal Board of the IP Office affirmed the ruling.

The Board agreed with our 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.