The Intellectual Property in Ecuador has had several advances, a turn in its conception and application since the Social Economy of Knowledge, Creativity and Innovation Organic Code. The change of the authority vision has allowed the increase of resolutions that protect not only trademark rights, but also copyright, which for several years have been displaced.
The Industrial Property National Direction, through its delegate, has correctly applied the Intellectual Property basic principles in one of the most emblematic processes that this Trademark Office has resolved. For this reason, we present a summary of this case, that hopefully will constitute a precedent for future similar cases.
Our client, BATH & BODY WORKS BRAND MANAGEMENT INC., is the owner of several international products and stores. This company has taken all legal precautions in order to protect its trademarks, labels and designs, from third parties that have pretended to take over forms, packaging and even the design of their products presentation.
With this background, our represented instructed us to file oppositions to several trademark applications requested by EDUARDO DOUSDEBES REPRESENTACIONES. DOUS INTERNATIONAL IMPORT - EXPORT S.A. company, which tried to register as trademark in International Class No. 3 (among other products: soaps, perfumery, essential oils, cosmetics, hair lotions), the following names: I LOVE, DARK AMETHYST, MANGO MANDARIN, MIDNIGHT POMEGRANATE, RASPBERRY VANILLA, VANILLA SUGAR, each one accompanied by a label, which have unmistakable similarities with those protected by our represented as Copyright. For example:
BATH & BODY WORKS BRAND MANAGEMENT INC. has initiated worldwide countless processes for counterfeiting. In Ecuador, within the appropriate evidence stage, we filed as proof the Copyright titles obtained in China, which allowed us to demonstrate the authorship of designs in favor of our represented.
After the respective analysis and with strict adherence to law, the Trademark Office Oppositions Delegate, rejected in a motivated way the trademark applications requested by a third party and decided to accept our claims in the opposition proceedings, basing her resolutions in the evidence provided.
Thus, we recognize the work of those who are part of Intellectual Property Ecuadorian Institute, which engage us in a greater way to impulse each process that safeguard our clients’ rights.
For many years in Ecuador, we have not seen a trademark nullity decision issued by the Intellectual Property Committee based on the bad faith causal determined on the 172 article of the Andean Community 486 Decision.
The CHEMINOVA A/S, company as the first owner of the PROAXIS trademark in Ecuador filed an extraordinary revision recourse for the purpose of getting the nullity of the trademark registration obtained by Mrs. DANIELA URREJOLA ORTÍZ. This person who had full knowledge of the PROAXIS trademark previous existence decided to cleverly wait for the trademark expiration in order to immediately request the registration and get it for herself.
This case is characterized due to an additional aspect, as it was established that the applicant is a person expert in trademark issues who not only tried to registered the aforementioned CHEMINOVA´s trademark but also four more brands of this company which are meant to distinguish products of the same international class. This aggravating circumstance was exposed and duly evidenced before the authority, which took this argument and applied it on the resolution No. 0536-2017-CPI-2S in order to definitely cancel a registration gotten in an illegal and illegitimate way.
The following is an abstract of the mentioned resolution that is worth reading:
“The Chamber estimates that the manifested in the present paragraph constitutes reasonable indication of the harm intention against a determined competitor when the PROAXIS brand was registered and when four more brands of the same owner were requested, for the same products- it is 5 applications and the two additional matching with the trademarks of CROPTECH S.A. the only ones requested by DANIELA ALEJANDRA URREJOLA ORTIZ in Ecuador.
Due to the above, the Chamber estimates evidenced the existence of bad faith acts tending to cause prejudice to CHEMINOVA A/S by DANIELA ALEJANDRA URREJOLA ORTIZ, who tried to arrogate- and in PROAXIS case she did it- the trademarks of the mentioned company in Ecuador in an evident attempt of a unfair competition act consolidation due to the coincidence mentioned allows to deduce that the accused knew about the plaintiff trademarks before she requested its registration”.
This is a case that sets a precedent not only for our firm but also for the country due to it considers something more than only the legal formality of the registration lack of renewal. It considers the existence of a legitimate owner known locally and abroad.
As is usual at a global level, for all of the procedures related to Intellectual Property it is necessary that the physical person or legal person applying for the registration of a trademark (renewal or modification, as the case may be) grants a power of attorney to the Lawyer or Office that acts as an agent of intellectual property.
Depending on the country, in some cases is not required a special formality or legalization of the power of attorney when it comes from abroad. In the Ecuadorian case, it is compulsory that the power of attorney must be granted before a Notary Public, (a public officer who has the attribution to give public faith or to authenticate documents), who must verify the identity of the grantor or the representative, the authenticity of the signature, and the capacity to act in behalf of the grantor, when it is the case of a legal representative of a corporation or a person authorized to grant powers of attorney in name of the grantor. Later, it is necessary the legalization, which is required for all the documents issued in other countries, this may be done through diplomatic channels (Ecuadorian Consul) or, thanks to the Hague Convention, through Apostille which authenticates the capacity of the Notary who acted and the legality of the process.
According to the rules of Administrative Law exempt the user from demonstrating more than once the same fact or to provide documents that are already stored or filed in a Public Institution, therefore, many years ago in Ecuador it was enough to refer to the power of attorney that has already been submitted. However, now a process of registration of powers of attorneys has been created, and operates digitally thanks to the Internet platform of the Ecuadorian Institute of Intellectual Property.
The new Organic Code on the Social Economy of Knowledge, Creativity and Innovation, incorporates an important rule, specifically the Article 98, which imposes an obligation to the applicant or rights holder not domiciled in Ecuador, to have a legal representative or legal agent through a power of attorney registered at the Trademark Office in Ecuador. This substantial change, is oriented to have certainty of who is the legal representative or agent in Ecuador with the power to represent the applicant in any Administrative or Judicial procedures and before administrative and judicial authorities, this excludes the possibilities that the agent is authorized only to file renewals or to proceed with any act limited exclusively to a specific sign or trademark, for example.
Meanwhile, we are cautious and vigilant to the Regulations -to be issued soon- that will develop and implement the Article 98 of the above-mentioned law, therefore, we suggest to all of our clients and associates to abstain from granting multiple powers of attorney or having different agents for various procedures in Ecuador; not only to comply with this rules but also to avoid an undesirable additional effect, which is that the client's portfolio will not be updated, as different Law offices would be handling many processes. All of this makes compulsory to consolidate the management of their intellectual property matters in a single agent.
We remain at your entire disposal if you have any doubts or concerns about this or other matters.
That there are different trademark types is not new. The Andean Community legislation -applicable in Ecuador- allows the registration of a wide range of signs. The new Ecuadorian local law, the Social Economy of Knowledge, Creativity and Innovation Organic Code, listed other distinctive means equally protectable.
Every day we file applications word, mixed and figurative trademark applications, including three-dimensional ones. Sound trademarks are less frequent, which we have also registered in several cases. There are also olfactory trademarks.
A special type of signs are those perceptible by touch sense, in this order there are trademarks relative to the texture of a surface, which may be a packaging product. However, in Ecuador the registration of a TACTILE TRADEMARK constituted by the succession of letters written in language or reading system BRAILLE very useful for blind people had not been requested. Thanks to the trust of an important American company, Wonder Power Music, our law firm requested the first trademark registration of this type and we are happy to share it in this note.
The current Law now allows us to request trademarks registration formed of animations, gestures or movement sequence, as well as holograms, which were previously not contemplated. Regarding this type of signs, the secondary norms necessary to operationalize their application have not been issued yet. Although the procedure will be the same as it currently exists, only details are necessary that allow, for example, determining in the application the sequence of images or their description, so that the protection is correctly delimited.
We continue advancing with firm steps regarding the new challenges that this millennium holds.