ECUADOR: Procedure Recognizes Protection of Well-Known Marks

Ecuador has issued a highly anticipated regulation as another attempt to protect famous marks.

The Ecuadorian National Service of Intellectual Rights (SENADI) enacted the long-awaited regulations on November 17, 2020, to protect well-known marks.

The enhanced intellectual property (IP) rights for well-known marks are established under Andean Community Decision 486; however, there had been no decisions in Ecuador awarding such protection since the imposition of special fees in September 2014. Ecuador enacted a new IP law in 2016, but the law did not include procedures on how well-known mark status would be issued.

The Regulation for the Protection of Knowledge establishes a special declaration procedure to obtain recognition and enhanced protection of well-known marks. The petition must be filed together with the foreign registration details of the mark, the country or region where the mark has acquired well-known status, and the time frame when status is claimed, as well as a detailed description of goods or services claimed and an indication of the sector in which the applicant is trading. Article 313 of the Regulation for the Protection of Knowledge requires that an official fee be paid and that the application contain evidentiary material proving well-known status as described in the local and Andean IP laws. If the application is missing any of the required information, the applicant has 10 days after SENADI’s request to provide it.

If SENADI reviews the petition and grants well-known status, the mark will enjoy heightened protection and its status will be presumed to continue for seven years from the date of grant. SENADI will publish the decision in its institutional media and issue an electronic certificate. The regulation says that an owner may reapply at any time if the circumstances continue. A new procedure may be started if in time the mark continues to meet the requirements for well-known status.

If there is a pending administrative proceeding where a mark owner asserts a claim of well-known status, the owner will need to start a separate declaration procedure as explained above, and the IP Office will suspend the pending procedure until a decision regarding well-known status is issued.

Recognition as a well-known mark will protect against unauthorized use of the mark, and the copying, imitation, translation, or transliteration of the mark, or any confusingly similar mark in relation to the same or related products or services. It also awards protection against use that could cause consumer confusion or association with the owner of the mark, dilution by blurring or tarnishment, or if the use would take unfair advantage or be detrimental to the distinctive character or reputation of the mark.

With these new regulations, trademark owners in Ecuador can expect that their well-known marks will be protected as granted by international treaties.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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