ECUADOR Law and Practice Contributed by: Arianna Zurita Farías, Annabel Muñoz, Javier Estupiñán and Juan José Flores Rabascall, VIVANCO & VIVANCO
2. Trade Marks 2.1 Legal Framework and Protectable Signs In Ecuador, trade mark protection is primarily governed by COESCCI. However, as Ecuador is a member of the Andean Community, the Andean Community Deci- sion 486 plays a central role. In practice, this regional framework establishes the key rules for registration, scope of protection and enforcement. A broad range of signs may be protected as trade marks, provided they are distinctive and capable of identifying the commercial origin of goods or ser- vices. These include words and brand names, logos and designs, shapes (such as product packaging), colours or combinations of colours (in certain cases) and sounds. Other non-traditional marks, such as scents, are generally not accepted in practice due to challenges in their representation and examination. Ecuador operates under a first-to-file system, mean- ing that rights are generally granted to the first party to file an application, rather than the first to use the mark. As a result, unregistered or common law trade marks are not formally recognised. It is also important to note that Ecuador differentiates between trade marks, commercial slogans and trade names as distinct types of distinctive signs. While the registration process is broadly similar, each has specific characteristics. Commercial slogans must be linked to a specific trade mark and will follow its legal status, including its class and term of protection. Trade names, on the other hand, may be protected through use in commerce, meaning that rights can arise even without formal registration. 2.2 Requirements for Trade Mark Protection The key requirement for trade mark protection in Ecuador is distinctiveness. A sign must be capable of distinguishing the goods or services of one busi- ness from those of others. Signs that are generic, descriptive or commonly used in the relevant market are generally not registrable unless they have acquired distinctiveness through use. Use in commerce is not required to obtain a trade mark registration. Protection is granted under a first-
to-file system, meaning that priority is given to the first applicant rather than the first user. However, use becomes relevant at later stages, particularly to defend rights or to avoid cancellation actions based on non-use. Acquired distinctiveness may be established when a sign that is not inherently distinctive becomes asso- ciated, in the minds of consumers, with a particular business. In practice, this is demonstrated through evidence such as the duration and extent of use, advertising and marketing efforts, sales figures, mar- ket presence and consumer recognition. The more consistent and robust the evidence, the greater the likelihood of overcoming a descriptiveness objection. Ecuador also recognises and protects well-known or famous marks, even if they are not registered locally. Under the Andean Community Decision 486, such marks may be enforced where their recognition in the relevant sector can be demonstrated, regard- less of whether they are registered in Ecuador or in other Andean Community member countries such as Colombia, Peru or Bolivia. This protection is not lim- ited to identical goods or services and may extend further depending on the level of recognition and repu- tation of the mark. 2.3 Trade Mark Registration System Registration is the most effective way to secure and enforce rights. While certain signs, such as trade names, may be protected through use, enforcement without registration is generally more limited and com- plex. Trade mark applications are filed before SENADI. The process typically includes: • a formal examination; • publication for opposition; • a 30-working-day opposition period; and • a substantive examination. If no objections or oppositions arise, registration may be granted in approximately 6–8 months. However, in practice, the process may take longer, particularly if oppositions or office actions are issued.
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