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October 15, 2015 Vol. 70 No. 18 Back to Bulletin Main Page

ECUADOR: Criminal Protection for Counterfeiting or Copyright Piracy Reintroduced

Ecuadorean IP law, Law No. 83, enacted on May 19, 1998, included an entire chapter on crimes and punishment, including criminal provisions relating to infringements of patents, plant varieties, well known trademarks, commercial secrets, geographic indications and copyrights. But, as reported in the October 1, 2014, INTA Bulletin, the enactment of the “Código Orgánico Integral Penal,” a comprehensive new criminal code, repealed criminal provisions from any other existing law, includ-ing the Ecuadorean IP law. This criminal code included a transition provision that ordered that the law would come into force 180 days after publication, or August 10, 2014. Consequently, on that date, all IP infringements were decriminalized in Ecuador.

However, the Ecuadorean Assembly became aware that the repeal of criminal protection for certain IP infringements would leave Ecuador in default of its obligations with the World Trade Organization, through the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), particularly Art. 61, which requires Member States to provide minimum criminal protection in cases of willful trademark counterfeiting or copyright piracy on a commercial scale.

Source: Perez, Bustamante & Ponce

In order to recover compliance with its international obligations, the Ecuadorean Assembly approved a reform of the criminal code on August 11, 2015, which only came into force through its publication in supplement 598 to the Official Registrar of September 30, 2015. Among other changes, the reform reintroduced criminal procedures in two specific cases: willful trademark counterfeiting and copyright piracy on a commercial level. By establishing a gradual table of fines dependent on apprehended value, the reform states that these two cases will be considered crimes, but did not reintroduce the previously existing jail sentences. The current table for these fines is reproduced above.

The reform contemplates interesting provisions relating to well-known or notorious trademarks which do not require registration in Ecuador, and provides trademark owners worldwide with a plausible alternative to enforce IP rights in Ecuador if their trademarks are not yet registered with the IP authority in Ecuador. In practical terms, however, it remains to be seen how a criminal judge will validate the status of well-known or notorious marks in order to admit a criminal procedure in these types of cases.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association