Regarding the protection of intellectual property rights, Andean Community legislation as well as Ecuadorian legislation establishes that the right to exclusive use of a trademark is obtained through registration of the trademark with the respective competent national office, that is, the National Office of Industrial Property of the Ecuadorian Institute of Intellectual Property (I.E.P.I.).

As a result of that previously mentioned, one must take into consideration that the rule is primarily obtaining the registration for the trademark with the Competent National Office and later the right to use the trademark. Note that use prior to registration does not concede the right, except precise exceptions. Among such exceptions are the following:

  1. Exclusive right over a trade name is acquired through first use, as we will see below;
  2. In spite of not having sufficient distinctiveness, being a descriptive or generic term or consisting of a uniquely considered color, a symbol may be registered as a trademark if the person applying for its registration or its principal would have been using it constantly in the Member Country and, for the purpose of such use, the symbol has acquired suitability respecting the products or services to which it is applied.
  3. The date on which a trademark has distinguished products or services in a declaration officially recognized and made in any country may be invoked as the date of submission of an application for registration of that trademark whenever the mark is applied for within six months from the day in which the products or services with such trademark have been exhibited for the first time. In this case, the application may be able to be taken as presented from the date of display, which is therefore the date of first use.

However, it must be taken into consideration that once the trademark registration is obtained, it is necessary to use the trademark. For that purpose, one must indicate that failure to use a trademark is grounds for requesting a cancellation action when without justification the trademark has not been used by its owner, licensee or other authorized person in at least one of the Member Countries of the Andean Community or in any other country with which Ecuador maintains agreements in force regarding intellectual property during the consecutive three years preceding the date in which the cancellation action is initiated. The cancellation of a registration for lack of use of the mark may be requested as a defense in an opposition proceeding instituted on the basis that the mark is unused.

It is necessary to clarify that cancellation for lack of use must be requested by a third party. The competent National Office does not have the authority to initiate this action ex oficio.

It is appropriate to mention that lack of use of a mark may be total or partial, according to the effect on one, several or all the products or services for which the mark has been registered. For that purpose, the competent entity will direct the total cancellation of the trademark (for all the products it protects) or will provide a reduction or limitation of the list of products or services included in the registration of the trademark, eliminating those in respect to which the mark has not been used; for this, the identicalness or similarity of the products or services will be taken into account.

Registration of a mark will not be cancelled for lack of use when the owner of the mark demonstrates that the lack of use was due, among others, to force majeure or act of God.

With respect to the form which use of the mark must take, Decision 486 of the Andean Community, which contains the Common Regime on Industrial Property, the Ecuadorian Law of Intellectual Property and its regulation establish the following:

  • Use of a mark includes when the products or services that the mark distinguishes have been placed in trade or are available in the market under this mark in a quantity and style that is normally appropriate, taking into account the nature of the products and services and the methods under which marketing is performed in the market.
  • The mark will have to be used in the form in which it was registered. Modifications are permitted only to those details or elements that don't alter the mark's destinctiveness.

As regards the documents through which the owner of the registration may demonstrate use of the mark, we have, among others, the following:

    1. The commercial invoices that demonstrate regularity and quantity of marketing prior to initiation of the action for cancellation for lack of use of the mark.
    2. The inventory of merchandise identified with the registered mark, whose existence is certified by a firm of auditors that demonstrate regularity in the production or sale prior to the date of initiation of the action for cancellation for lack of use of the mark.
    3. Any other medium of suitable proof that proves utilization of the mark, for example the products of the registered mark that are exported from any of the Member Countries of the Andean Community, or when utilized by a duly authorized third party, even if said authorization or license has not been registered; and, when authentic products with the registered mark have been introduced and distributed in the market by persons other than the proprietor of the registration.

In relation to the use of a trade name, the following must be taken into account:

  • The exclusive right over the trade name is acquired through public, continuous and good faith first use in trade for at least six months and ends when use of the name ceases or the activities of the company or establishment using the name cease.
  • The proprietor of a mark may register the trade name with the National Office of Industrial Property registration that only will have a declaratory character since the right to exclusive use is only acquired through first use, which will have to be proved at the moment of applying for registration.

In respect to the proof of use for renewal of the registration for a mark, it should be noted that Decision 486 leaves open the possibility that a member of the Andean Community may request proofs of use for they purpose of renewal of the trade name, Ecuadorian domestic legislation currently does not envisage this proof except exclusively for purposes of application for cancellation..

Finally, please bear in mind that the information provided in this Legal Report is merely a brief summary of the legal matters analyzed. Changes in legislation or regulations may broaden or simplify applications of the norms therein. Our Legal Report may not be construed as legal advice but simply as information for our clients. Should you have any doubts or wish to make specific inquiries, please do not hesitate to contact us.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.