Governing Law

In Ecuador the rules applicable to industrial property rights are mainly

contained in (i) Decision 486 of the Andean Community in force in Ecuador

since December 1st, 2000, (ii) Organic Code for the Social Economy of

Knowledge, Creativity and Innovation of Ecuador (Intellects Code) published in

the Official Gazette No.899 supplement of December 9, 2016. Book III, entitled

"the management of knowledge" regulates the intellectual property rights. This

Code derogates the Intellectual Property Law enacted in 1998, and (iii) the

Regulations to the Intellectual Property Law (February 1, 1999) that will remain

in force until the enacting of the new Regulations of the "Intellects Code".

Decision 486 supercedes the Intellectual Property Law in case of conflicting

rules.

      In Ecuador are also in force and effect the Cartagena Agreement rules

related to plant varieties, copyrights regulatory matters, etc, Trade Related

Intellectual Property Rights (TRIPs), Paris Convention for the Protection of

Industrial Property, Berne Convention for the Protection of Literary and Artistic

Works, and Patent Cooperation Treaty (PCT).

Trademark

      The symbols that are discernible,  sufficiently distinctive, and subject to graphic representation may be  registered as marks. Commercial name and slogans, and trade dresses are also  registrable.

　　Among others, sounds and odors may be registered as a  trademark, as well as combination of colors and a single color delimited by a  specific form.

　　Symbols may not be registered as trademarks if they: (a)  Fail to meet the definition of a trademark; (b) Consist of solely of  characteristics imposed by the nature of the use of the goods or services; (c)  Consist of solely of forms that improve the functioning or art, or enhance or  change the intrinsic value, of the goods or services; (d) Consist of solely a  symbol or name that serves in commercial use to identify or describe the type,  quality, quantity, use, origin, or other facts regarding the goods or services  for which they are used; (e) Consist of solely a symbol or name that, in common  speech or in commercial use in the country, is conventionally used to designate  the goods or services for which it is used; (f) Consist of a color that stands  alone without being incorporated into a specific form; (g) Are contrary to law,  moral, public order or accepted standards of behavior; (h) May deceive  commercial entities or the general public, with regard to the origin, nature,  characteristics, qualities or usefulness of the goods or services; (i) Reproduce  or imitate a protected name of origin, consist of a local or foreign  geographical name that may cause confusion when used on or in connection with  goods or services; or which may mislead the public regarding to the origin,  source, qualities or characteristics of the goods for which they are used; (j)  Reproduce or imitate the name, coat of arms, flags or other insignia, titles or  abbreviations of any officially recognized state or international organization,  without permission from the state or international organization; in any case,  such symbols may only be registered if they are subordinated to the principal  distinctive mark; (k) Constituted by signs that reproduce or imitate technical  standards, unless the competent domestic agency in charge of technical and  quality standards is the applicant; (l) Reproduce coins or bills of legal tender  within the national territory, or of any country, or titles, and other business  documents, seals, tax stamps or species in general; (m) Consist of the  denomination of protected vegetal specie to be obtained in the country or  abroad, or of a denomination essentially derived from it; unless the application  is made by the same titleholder.

　　However, when a sign are not intrinsically  capable to distinguish the pertinent products or services, the IP Office may  allow its registration if a secondary meaning has been acquired through use to  identify the applicant’s products or services.

　　In addition, symbols may not  be registered as trademarks if, with respect to a third party’s rights, they:  (i) Are identical to, or sufficiently resemble so as to cause confusion, a mark  for which registration has been applied or registered by a third party, for the  same goods or services, or for goods or services for which the use of the mark  may cause confusion; (ii) Are identical to or resemble a protected commercial  name, in accordance with domestic law in the member countries of the Andean  Community, which under the circumstances may cause confusion; (iii) Are  identical or similar to a registered commercial slogan, which under the  circumstances may cause confusion; (iv) Are identical to a mark, or sufficiently  resemble to cause confusion, and the applicant is, or was, a distributor or  expressly authorized person by the owner of the trademark in any Andean or  foreign country; (v) Constitute the complete or partial reproduction, imitation,  translation, or transcription of a distinctive symbol widely known in the  country, or in countries that are sub-regional or international trading partners  and provide reciprocity; (vi) Consist of the complete name, surname, pseudonym,  signature, caricature, or portrait of a natural person other than the petitioner  or which is identified by the general public as person other than the  petitioner, except with the consent of that person; (vii) Consist of a sign that  affects the identity or prestige of an artificial person; (viii) Consist of the  name of an indigenous, A fro-American or local community, or the denominations,  words, letters used to distinguish their products or services, except if an  express authorization is submitted; (ix) Consist of titles of literary,  artistic, or scientific works or fictitious or symbolic characters whose  copyright is owned by a third party, without his or her consent. (Decision 486,  article 136).

　　The Trademark Office can also deny a trademark application if  it has a reasonable indication to infer it was filed for facilitating or  consolidating an unfair competition act.

Registration  Proceeding

　　After filing, the Trademark Office examines whether or  not it meets the filing formal requirements within the fifteen days counted as  of the filing date of the application. If the application does not meet the  filing a requirement, the applicant is notified so that it may complete the  requirements within a term of 60 days. Otherwise, the application shall be  deemed abandoned and it will lose its priority.

　　If the application for  registration meets the filing requirements, the Trademark IP Office orders its  publication.

　　Within the thirty working days following the publication,  whoever has a lawful interest, may file for once, a grounded opposition. Upon  request, the IP Office shall grant, for once, an additional term of thirty days  for filing the evidence in support of the opposition.

　　Oppositions can be  filed on the grounds of registered marks, famous foreign marks (even is not  registered), and marks that are registered in another Member Country of the  Andean Community.

　　The opponent has to show actual interest in the market of  the Member Country where the opposition is lodged, applying for the registration  of the mark at the moment to file the opposition. (Decision 486, article 147)  Once such term expires, the Trademark Office resolves over the oppositions, and  performs a registrability examination to grant or deny the registration of the  trademark.

　　Famous marks enjoy levels of special protection, even if they  are not locally registered. The registrant of the widely known mark in Ecuador,  in any Andean country or in the international trade, may take actions against  applications that constitute the complete or partial reproduction, imitation,  translation, or transcription of the distinctive symbol widely known. This  prohibition shall apply, regardless of the class of goods or services, both if  the symbol is used for the same goods and services as those protected by the  widely known trademark, or if used for different goods or services.

　　The  Trademark Office also shall cancel a trademark registration, upon request of the  legitimate owner, when said mark is identical or similar to a trademark that has  been widely-known according to the law of the time when the second application  was filed.

　　When a notorious mark is registered as domain name, or e-mail  address by a third party, the national authority will order the cancellation or  modification of such a record if it causes confusion, damages the distinctive  character of the notorious mark and gives an unfair advantage to the third.  (Decision 486, article 233)

　　Multiclass applications are not allowed. A  separate application for each desired class is necessary. The Nice  Classification is used, but each application must be filed with express  indication of the products or services for which the mark is to be registered.  Therefore, to include the phase “and all other goods/ services covered by the  class” is no longer allowed. (Decision 486, article  139)

Renewals

　　Renewals must be requested within the 6  months prior to its expiration, notwithstanding there is a 6 month grace period  counted as of the due date to obtain a renewal.

Patent

     Patent is granted for any invention,  being of products or procedures, in all fields of technology, proving that it is  novel, has an inventive level and industrial application.

　　Application may  be filed by the inventor or his assignee, whether a natural or artificial  person.

　　Ecuador is also a PCT member country. The national phase of a PCT  application should be filed before or during a period of 31 months from the  priority date. For PCT applications, certified copy of the Priority and  Assignment documents are not required.

　　The following items shall not be  considered as inventions: a) Discoveries, scientific theories, mathematical  methods; b) Materials already existing in nature, including any living form  genome; c) Literary and artistic works or any other aesthetic creation; d)  Plans, rules and methods for the exercise of intellectual activities, for games  or economical and commercial activities, as well as computer programs or logical  supports; meanwhile they are not part of an invention susceptible for industrial  application; and e) Ways to show information.

　　Expressly excluded from  patentability are: a) The inventions whose commercial exploitation must be  necessarily prevented to protect public order or morality, including the  protection of life or health of people, or animals, or to preserve vegetables or  to avoid serious damage to the environment or ecosystem; b) Diagnosis,  therapeutic and surgical methods for the treatment of people or animals; and c)  The plants and animal breeds, as well as the procedures essentially biologic to  obtain plants or animals.

　　Claims for uses (including novel or second  medical use) are not allowed.

Registration  Proceeding

　　Within thirty days following the application date, the  applicant shall be notified of the results of the formal examination. The  applicant has 2 months, extendible once, to reply to the examiner’s  observations. Once the formal requirements are accomplished, an abstract of the  specification is published in the Official Gazette within 18 months from the  application or priority date (or earlier under applicant’s request).

　　Within  the term of 60 working days following the date of publication, whoever has a  legitimate interest may file a well-grounded opposition, against the  patentability or title ownership of the invention.

　　Within the term of 6  months from the publication date, the applicant should request a technical  examination of his patent application; otherwise, this application will be  declared abandoned (Decision 486, article 44).

　　After requesting, the Patent  Office shall proceed to examine whether the invention is or is not patentable.  It may require the opinion of appropriate experts, scientific or technological  organizations regarding the substantial requirements. Applicant may ask for the  stopping of the examination procedure until the examination in another country  is finished.

　　If upon examination the patent application is found  acceptable, the patent registration certificate will be issued. If the  determination is only partially favorable, or unfavorable, the applicant will be  notified. The Patent Office gives the applicant a period of 60 working days  (extendable once) starting at the notification date, for submitting additional  pleadings, including his arguments, documents or re-writing the claims or  description of the invention.

Patentee’s Rights

　　A  patent grants to its owner the right to prevent third parties from using the  invention without his consent.

　　However, there are several limitations to  this right: (i) in case of parallel imports; (ii) when the patented invention is  being used privately and non-commercially; (iii) when the invention is being  used exclusively for experimental, academic, or scientific purposes; or (iv) in  case of article 5 of the Paris Convention.

　　A patent right cannot be  enforced against an auto reproducing biological material, when it is used as  basis for a new material.

Working

　　It is mandatory to  work a patent, in any Andean Community Country, directly or through an  authorized party.

　　To avoid compulsory licenses, it is required to work the  patent within 3 years from granting date or 4 years from application date,  whichever is later.

　　Compulsory licenses can be granted by the Patent Office  by request of a third party that has not been able to obtain a license agreement  in reasonable conditions. In this case compensation is  mandatory.

　　Compulsory licenses can also be granted when there are: (i)  practices against free trade; (ii) public interest or national emergency reasons  (previously declared). In this case the license will be valid while the  declaratory remains valid; (iii) in case the license is required in order to  work a linked patent.

　　On October 23, 2009 an Executive Decree-Decree  118-entered into force in Ecuador to allow the granting of compulsory licenses  for patents related to human medicinal products. Decree 118 declares of public  interest the access to medicines used to treat diseases that affect the  Ecuadorian population and that are a priority for public  health.

Annuities

　　Annuities are payable for granted  patents and applications (this does not apply to utility model patents).  Payments should be done up to the last day of the month in which the patent was  originally deposited. Payments for 2 or more annuities can be made at once.  There is a 6 months grace period (with a fine) for late  payments.

Generalities

Additional  Protection:

　　Protection for Industrial Design, Utility Model and  Plant varieties is also  provided.

Appeals

　　Reconsideration may be asked to the  Industrial Property Director regarding an adverse official action within fifteen  days after official notification.

　　Appeals may be filed until the  Intellectual Property Committee-the highest administrative authority-within  thirty days as from the notification date.

　　Revision may be filed until the  Intellectual Property Committee within 3 years as from the date of an adverse  official action.

　　Starting an administrative resource suspends the original  procedure until the final resolution of such a resource. (Intellectual Property  Law, article 357). Every administrative resolution may also be appealed before  the Contentious Administrative Court within 90 days after its official  notification.

Action against Infringements

　　Civil and  administrative actions can be taken in case of violation of intellectual  property rights. A demand may be filed for: ceasing of violation acts; seizure  of the ECUADOR products or other objects involved in the transgression,  withdrawal from commercial channels of merchandise involved in the  transgression, as well as its destruction; seizure of the apparatus and means  used to perform the transgression. Compensation for damages and torts, and the  repairing in any other way of the effects generated by the violation should be  claimed by a separate action.

　　Precautionary measures and Border measures  are also available.

　　   News  Update

Unfair Competition

　　Ecuador  enacted the Organic Law for the Regulation and Control of Market Power  (Antitrust Law), on October 13, 2011, and regulation of the Law, on May 7,  2012.

　　According to the Antitrust Law unfair practices include, among  others: acts that confuse, deceive, imitate or denigrate other competitors; acts  that exploit the reputation of others; violation of trade secrets; induction to  breach a contract; violate rules; and harassment, wrongful influence and  exertion of duress against consumers. A comparative advertising can be  considered as an unfair competition act when it refers to non-analogous  extremes, to non-relevant facts or that cannot be proved. The Law creates a new  entity, the Superintendence for the Control of Market Power to investigate and  deal with this kind of claims.

Official Fees

　　As from  September 2014 (Resolution No.003- 2014 CD-IEPI), most official fees for IP  procedures related to trademarks and other distinctive signs were substantially  raised. In October, 2012, official fees related to inventions, and plant  varieties were also increased. Increases also refer to three-dimensional  trademark applications. Fees were raised between 697% and 3629%. Discounts of up  to 90% will be available for certain classes of applicants-namely small and  medium sized companies, universities, independent inventors, and public  institutions-through a regulation that it is still pending for  approval.

Criminal enforcement of IP rights

　　Criminal  Organic Code enacted in Ecuador as of August 2014, decriminalizes all  intellectual property rights violations, by eliminating Chapter III, “Offenses  and Penalties” of the IP Law. Then, criminal enforcement of IP rights is no  longer available in Ecuador. To this date, a proposal of amendment is under  revision in order to re-establish criminal enforcement and penalties for  trademark and copyrights infringements (not for patent).

Compulsory License for  Patents

　　On November 12, 2012, Ecuador issued a second compulsory  license on abacavir/lamivudine, pursuant to Executive Decree 118 (see “Patents”  above). In 2009 the Ecuadorian Intellectual Property Institute-IEPI, had issued  the first compulsory license for Lopinavir/Ritonavir (an antiretroviral  drug).

　　The Ecuadorian Patent Office issued a press communication stating  that “With this action we are proving that things change when there is political  will, when public health is as important as foreign agreements such as trade  agreements and investment in Ecuador” and confirms its purpose to lead on the  implementation of TRIPs flexibilities by granting compulsory licenses on patents  related to human medicinal drugs.

  Provided by Janet Hernandez C. from  ABREU & ASOCIADOS.     Source:  International IP Law Firms 2015   International IP Law Firms  reserves the full copyright of this article. Any transfer must be under our  permission and with the mark of International IP Law Firms