TRADEMARKS FILING AND PROSECUTION IN ECUADOR
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Ecuador are designated by the following symbols:
- ™(for an unregistered trademarks, that is, a mark used to promote or brand goods)
- ®(for a registered trademark)
The owner of the registered trademark may commence legal proceedings against trademark infringement of its mark.[1]
Ecuador is the member of the Andean community. Andean community decision no. 486 contains common rules on trademark law in all member states (Bolivia, Colombia, Ecuador, and Peru).[2]
| Relevant office | National Service of Intellectual Rights (SENADI) |
| Nice classification | Yes (11th edition) |
| Paris convention | Yes |
| Madrid system | No |
| Multi class system | No |
| Documents required for filing a trade mark application | A Power of Attorney attested by a notary and legalized by the Apostille or up to the Ecuadorian Consulate if the particular jurisdiction is not he member of the Apostille convention. |
| Prosecution process | Filing publication of the mark in trademark journal opposition (within 30 working days from the date of publication) registration renewal |
| Registration term | 10 years from the date of registration |
| Renewal term | 10 years |
Trademark searches in Ecuador
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark searches in Ecuador can be conducted for word marks, device marks, numeral and labels. Ecuador national service of intellectual rights (SENADI) joins the TMclass with the latest version of nice classification and the searches can be conducted for goods and services. This tool also provide the translation to any 44 languages available.[3]
Trademark word search edition of Ecuador follows the nice classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in Ecuador can be conducted for the desired class and associated class.
Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Ecuador.
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.
A device mark can be searched with the help of international classification of figurative elements of marks which prescribes Vienna codes for different figures.
Filling trademark application in Ecuador
A single class trademark application can be filed in Ecuador.
Trademark applications in Ecuador can be filed in two categories:
- Ordinary applications
- Convention application (claiming priority from a convention country)
Ordinary trademark applications in Ecuador:
Ordinary trademark applications filed in Ecuador are applications which are filed without claiming any priority. Ordinary applications can be filed online before the Servicio Nacional de Derechos Intelectuales (“SENADI”), on their official website www.derechosintelectuales.gob.ec. Multi class trademark applications cannot be filed in Ecuador, separate applications are to be filed for each class.[4]
Priority/convention trademark applications in Ecuador:
A priority trademark application should be filed in Ecuador within 6 months after the date on which the application was made in the convention country.[5]
Paris convention
The Paris Convention for the protection of Industrial Property, signed in Paris, France, on March 20, 1983, established a union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim on the Paris convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Ecuador within 6 months of after the date on which the application was made in the convention countries.
Trademark classes for goods and services in Ecuador
Ecuador follows the international classification of goods and services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services from classes 1 to 45.
Trademark examination in Ecuador
Once the application is submitted for the registration, the national directorate of industrial property will examine the application whether it complies with all legal requirements required for the registration. The application will examined on the basis of the distinctiveness against prior trademarks.
Where during the examination period it is revealed that the application does not meet the formal requirements for the registration, the national directorate of Industrial property shall notify the applicant about the irregularity so that he can remedy or amend the application within a period a period of 30 days from the of notification.
If the applicant does not amend or remedy the irregularities in the application within the specified time, the application shall be rejected.[6]
Trademark opposition in Ecuador
Once the application meets all the formal requirements of the registration, the national directorate of intellectual property will accept the application and order it to be published on one occasion only in the industrial property gazette.
Any interested party may file a notice of opposition within 30 working days from the date of publication. The national directorate of intellectual property shall notify the applicant about the objection so that he can present his arguments as he sees fit within 30 days from the date of notification.
On expiry of the said period, the national directorate of intellectual property shall give a decision on the objection whether the registration of the trademark will be grant or refused and will give reason for the decision.
At any time before the decision is given, the parties may reach a settlement agreement which shall be binding on the national directorate of intellectual property.[7]
Oppositions can also be filed by the owners of the trademark in other member states of the Andean community. A local application needs to be filed to show the legitimate interest. [8]
Trademark registration in Ecuador
If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 10 years from the date of filing of the application and registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.country-index.com/country_surveys.aspx?ID=101
[3] https://euipo.europa.eu/ohimportal/en/news/-/action/view/4752096
[4] https://www.country-index.com/country_surveys.aspx?ID=101
[5] https://wipolex.wipo.int/en/treaties/ShowResults?search_what=C&treaty_id=2
[6] https://njq-ip.com/country/ecuador/trademarks/laws/
[7] https://njq-ip.com/country/ecuador/trademarks/laws/
[8] https://www.country-index.com/country_surveys.aspx?ID=101