Ecuador: Ecuadorian IP Office Deals Blow To Parasitic Trade Mark Applications

Last Updated: 7 October 2019
Article by Ian Wall
  • Well-known cosmetics brand HUDA BEAUTY brings trade mark opposition against application for identical mark based on Paris Convention priority
  • IP Office rejects application, taking it upon itself to review the online WIPO trade mark database with regard to the opponent's country of origin right, and to accept the online entry as evidence of such right
  • Decision represents a relaxing of evidential requirements and demonstrates a proactiveness rarely seen from the IP Office
  • Suggests willingness of authorities to protect big brands against parasitic trade mark applications

The Pitfalls of a First-to-File Trade Mark System

Ecuador's trade mark system is what is known as "first-to-file". This means that simply using a mark in Ecuador confers little to no rights. Moreover, the problems faced by brand owners in Ecuador having failed to secure registration of their trademark rights is compounded by the fact that the authorities have been slow to recognise even famous marks not yet used in Ecuador. The country is a signatory to the Paris Convention, but enforcing Article 6 bis has proved problematic in the extreme; even after overcoming the onerous evidential requirements of legalisation and translation, the threshold for well-known status almost always proved insurmountable.

It is also important to note that once a mark is on the register, there is a definite leaning towards presumption of validity and a registration is also a defence to infringement. (In fact, there are a significant number of Ecuadorian registrations that are arguably entirely descriptive, relating to erroneous examination dating back several years, but it is difficult to remove them from the register given such presumptions of validity. This creates significant problems advising clients, most notably regarding infringement.)

Therefore, when opportunists come along looking to register famous marks for which the client and brand owner holds no Ecuadorian or Andean registration, the alarm bells were traditionally ringing, particularly given that bad faith provisions are narrow in Ecuador; bad faith will not be made out unless it can be shown that there is or was a relationship between the entities, or that the applicant is in the habit of registering marks for financial gain.

A New Approach?

There are suggestions that the tide is turning towards the holders of famous marks and the big brands generally. Over the last two years or so we have seen more willingness from both the courts and the administrative authorities to act in anti-counterfeiting and infringement actions brought by the overseas owners of large brands. Also, in a recent case involving the cosmetics brand HUDA BEAUTY, the applicant, a Chinese entity, was trying to register a variation of the HUDA BEAUTY house mark, but essentially an identical mark. HUDA BEAUTY itself did not have any relevant local rights on which to base the opposition. However, in this instance it was able to base the opposition on a new application in Ecuador claiming convention priority from a Brazilian application. The case was considered to be sound; however the opposition decision itself was somewhat surprising.

Incorrectly failing to acknowledge the priority claim, the IP Office however proceeded to reject the opportunistic application on the basis of Article 6 quinquies of the Paris Convention. More importantly though, the IP Office took it upon itself to review the online WIPO trademark database with regard to the opponent's country of origin right, and to accept the online entry as evidence of such right. The approach of the IP Office is surprising given its willingness to override evidential requirements, and also its proactiveness. The decision should also be read alongside another recent case in which the IP Office accepted a notarial verification of a webpage as evidence of prior Andean rights rather than the physical legalised certificates of registration as typically demanded by the authorities ( Ecuadorian IP Office Accepts Notarial Verification Of A Webpage As Evidence Within An Andean Opposition).

Whether this decision is further evidence of an overall willingness to protect the larger brand owners is hard to say. However, it would not be surprising if it were, given the change in political direction within the country. Evidential requirements are often prohibitive to trademark enforcement in Ecuador, at a time when the country is seeing its doors opened to investors somewhat when compared to the previous government – recent agreements with the European Union and the IMF require that Ecuador is seen as more friendly to investors and outside interests, with the European Union agreement in particular providing for protection of around 100 EU geographical indications in Ecuador. The current president is also being seen as someone very much ready to embrace such a change of direction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions