ECUADOR: NEW INTELLECTUAL PROPERTY LAW
by Cecilia Falconi Perez
Ecuador's Law of Intellectual Property was issued in the Official Gazette No. 320, 19 May 1998, and has been in force since that date.
The law created the Ecuadorian Institute of Intellectual Property (EIIP), a public juridical entity with its own assets and administrative, economic, financial and operative autonomy. It is headquartered in the city of Quito.
The goals of the HIP are to foster the protection and defence of intellectual property rights recognised by national legislation and international treaties and agreements; to promote and foment intellectual creation in all of its manifestations; to diffuse technological knowledge in the cultural and manufacturing sectors; and to prevent those acts which may violate the principals of intellectual property and free competition.
The EIIP is made up of the following organs: President, Directive Council, Intellectual Property Committee, National Office for Intellectual Property, National Office for Copyrights and Related Matters, National Office for Vegetable Varieties.
The norms that will govern this entity's organisation and operation will be established in the Regulations to this law which, as per Article 171(4) of the new constitution, must be issued by the President of the Republic. As of today, no Regulations have been issued.
The Council's functions are to set an approve rates, to approve the Institute's budget, to propose to the President of the Republic draft laws modifying the Intellectual Property Law or its Regulations, and to dictate norms necessary for complete adherence to the law.
The function of the offices is to exercise the duties which correspond to the different branches of intellectual property, which basically consist of managing the processes for granting, registering, depositing or acknowledging the rights, as the case may be.
The Intellectual Property, Industrial Property, Vegetable Varieties and Copyrights Committees are in charge of processing and resolving consultations which the national directors may have with regards to oppositions presented against any request or any concession or registration of intellectual property rights; processing and resolving appeals and motions to re-examine; processing and resolving requests for cancellation of concessions or registration of intellectual property rights; and whatever other attributions are established in the law.
Trademarks: Requirements for registration
The law includes practically the same provisions contained in Decision 344 of the Commission of the Cartagena Association.
Article 195(j) adds a provision not contained in Decision 344, on the registrability of the names, coats of arms, flags and other emblems,
denominations, inter alia, establishing an exception to the general principal and directing that these symbols may be registered when they do not cause confusion as to the existence of a link between said symbol and the pertinent state or organisation. In addition, Article 196(a) in accordance with Article 83 of Decision 344, adds to the unregistrability of identical symbols the phrase "dilute its distinctive force of commercial value".
It is important to point out the fact that this law defines the notorious symbol in Article 196(d)(2): "A symbol will be recognised as notoriously known when it is identified by the corresponding sector of the consuming public within the country or internationally", while Article 84 of Decision 344 only establishes the parameters or requirements for a trademark to be
Article 196(e)(2) incorporates the definition of a highly renown symbol such as that recognised by the public in general within the country or internationally. Decision 344 of the Cartagena Agreement does not make reference to the concept of a highly renown symbol, and therefore this is a novelty in Ecuadorian legislation. Doctrine grants highly renown symbols greater importance than those identified as notorious symbols.
Article 200 gathers an important provision regarding preferential rights, as it establishes that a request for the registration of a trademark that has been validly presented in a member country of the World Trade Organisation (WTO), Andean Community, Paris Convention or any other treaty or agreement of which Ecuador is a party or with another country which grants reciprocal treatment to requests from member countries of the Andean Community, will give the petitioner or his assignee preferential rights for a six-month period, as of the date of his application, to request registration of the same trademark in Ecuador.
This provision bequeaths a greater protection with regards to preferential rights. While on its part, Decision 344 limits the priority treatment to countries member of the Andean Pact or other countries which grant reciprocal treatment to requests coming from the five member countries of the Cartagena Agreement.
The same procedure devised in Decision 344 is instituted; however, Article 205 also establishes the petitioner's right to extend the products or services within the same international class contained in the application until before its publication. This norm contradicts Article 89 of Decision 344, which only allows modifying secondary aspects of the registration application among which naturally is not included extending the products or services to be protected.
In addition, Article 208 of the Intellectual Property Law establishes that, within 36 working days following publication, any person with a legitimate interest may present duly founded opposition against the requested registration. It also adds that anyone who presumes to have a legitimate interest may request an extension of 30 working days to present the opposition.
This norm establishes a wider term for presenting oppositions than that granted in Article 93 of Decision 344, supra national law in this matter, which only establishes a period of 30 working days, without possibility of an extension.
Paragraph 3 of Article 210 recognises the parties' right to reach a settlement, which will be obligatory for the NOIP. However, if the parties consent to the coexistence of identical symbols to protect the same general interest will be affected. This norm is redeemable considering the need to protect consumers from the confusion that identical symbols may cause regarding what they believe or believed they had bought or acquired.
The new law contains the same precept as Decision 344 in the sense that the holder of a trademark may request a renewal during the six months prior to the expiration date. However, the holder of the trademark benefits from a six-month grace period, counted as of the expiration date, in which to request its renovation.
In order to renew a trademark it is not necessary to present evidence of its use.
Classification of goods and services
Article 215 establishes the use of the Nice international classification of 15 June 1957 in order to determine the trademark registration's international class; despite this classification already having been employed, the law recognises that it is still usable.
Rights conferred by the trademark
The same provisions contained in Decision 344 are recognised, including the trademark holder's right to prevent all acts now allowed by the law, including those carried out in digital communication networks or though other known or to-be-known channels of communication.
Cancellation and nullity
Cancellation is likewise regulated as in Decision 344, which establishes two possibilities for the cancellation of the registration of a trademark, i.e. due to lack of use or because of the notoriety of the mark. This last possibility has been extended to include the concept of the highly renown trademark.
The process for nullity is not very clearly set out in the new law and therefore, from our review, it seems that according to Article 227 there are two procedures for petitioning the nullity of the registration of a trademark:
a) Motion of Re-examination for Administrative Nullity. This must be heard and resolved by the Intellectual Property Committee of the EIIP. The period for the filing of this motion is three years as of the date the administrative act is issued. Insofar as the causes provided for presenting this action, they are the same as those established in Decision 344.
b) Motion for Judicial Nullity. This motion may be presented to the competent judge as long as the period for filing the motion for re-examination has expired and before a ten-year period has expired as of the date in which the registration was granted. This motion may not be filed if a motion for re-examination had previously been submitted and it had been definitely denied.
It is important to note that if registration had been granted in violation of Articles 194 and 195 of the law, the motion for nullity may be filed at any time, as long as the motion for re-examination has not been previously presented and denied.
The new Intellectual Property Law establishes that trade names will be protected without the need to register them, leaving the decision of their registration before the competent authority up to the owner of the title holder. The right to the exclusive use of the tradename results from its public and continuous use in good faith in the business for at least six months.
In our opinion, the law assimilates the concept of the trade name along with that of the corporate name of companies. The law comprehends the right of the title holder of a trade name to prevent new companies from adopting a similar or identical denomination as the one protected by the figure of the trademark or the trade name.
Like Decision 344, it establishes that trade names will be protected without the need for their registration, but it adds, "The right to the exclusive use of the trade name originates from its public and continuous use in good faith in business for at least six months".
In this provision, we also observe an extension of the time period during which the person employing a trade name has a right to its exclusive use.
Article 235 regards as a distinctive appearance any set of colours, forms, presentations, structures and designs that are characteristic and peculiar to a commercial establishment, and which identify and distinguish it in the presence of services or the sale of products. Meanwhile, Article 236 establishes that distinctive appearances will be protected in the same way as trade names.
This is the first time that an Ecuadorian law refers to geographic indications. Until this law was issued, they had only been mentioned in the TRIPs Agreement, Decision 344 and the last regulations for the application of the International Property Law issued through Official Gazette No. 145 dated 4 September 1997, which are in effect until the new regulations for the application of this law are enacted.
Basically, the law establishes that the National Office for Intellectual Property, through petition of the interested party (taking into account the public institutions in the corresponding districts) establishes the declaration of protection. Once the petition has been accepted to be processed, the same procedure for the registration of trademarks will be applied. In addition, a request for authorization to use a geographic
indication declared as protected must be presented to the NOIP by the persons directly dedicated to the extraction, production or manufacture of the products to be distinguished by the geographical indication and who carry out this activity within the territory determined in the declaration of protection.
Furthermore, Articles 247 establishes that the NOIP may declare the protection of geographic indications of other countries when a request is made by producers, extractors, manufacturers or artisans with a legitimate interest or by their public authorities. Geographic indications must have been so declared in their countries of origin. The law adds, "Geographic indications protected in other countries will not be considered common or generic for distinguishing a product, while said protection exists".
Trademark World October 1998, pp. 30-33
Â© Cecilia Falconi Perez 1998.
The author is a partner of: Falconi
Puig & Asociados PO Box 17-03-0423 Quito, Ecuador Tel:
(593) 2256 18 09 Fax: (593) 256 72 93 Email: