ECUADOR Law and Practice Contributed by: Arianna Zurita Farías, Annabel Muñoz, Javier Estupiñán and Juan José Flores Rabascall, VIVANCO & VIVANCO
In terms of costs, the official government fee is approximately USD208 per class. However, entre- preneurs and SMEs that are duly registered as such before the relevant authority may benefit from a 50% reduction, bringing the official fee down to USD104 per class. In addition, professional fees will apply and typically range between USD250 and USD500 per application, depending on the attorney and the com- plexity of the matter. Ecuador does not allow multi-class applications. Therefore, a separate application must be filed for each class, and each class will be subject to its cor- responding official and professional fees. 2.4 Term, Use and Maintenance A registered trade mark is protected for a period of ten years from the date of registration. This protection can be renewed indefinitely for successive ten-year periods. Renewal is relatively straightforward. The owner must file a renewal request before SENADI within the six months prior to the expiration date. A grace period is also available after expiration without the need for the payment of additional fees. Although use is not required to obtain or renew a trade mark, genuine use becomes important after registra- tion. A mark may be subject to cancellation if it has not been used for a continuous period of three years in Ecuador. In general terms, genuine use refers to the real and effective use of the mark in the market, in connection with the goods or services for which it is registered. This may include use on products, packag- ing, labels, advertising materials or websites, or in the provision of services. Use does not necessarily have to be extensive, but it must be consistent with the commercial purpose of the mark and not merely symbolic or intended only to preserve the registration. Evidence such as invoices, marketing materials, commercial documents and proof of sales is typically required to demonstrate use. If a mark is not used for the required period, it may be challenged and cancelled, either totally or partially, depending on the scope of non-use. This means that
protection can be lost for all or some of the registered goods or services. 2.5 Trade Mark Rights and Limitations A registered trade mark in Ecuador grants its owner the exclusive right to use the mark in connection with the goods or services for which it is registered, as well as the right to prevent third parties from using identi- cal or confusingly similar signs without authorisation. This includes use on products, packaging, labels and advertising, and in any form of commercial communi- cation. The owner may also take action against uses that could give rise to confusion, association, unfair advantage or dilution, including in relation to well- known marks. While rights are primarily acquired through registra- tion, certain signs, such as trade names, may also generate rights through use. However, in practice, reg- istered trade marks provide a more robust and effec- tive basis for enforcement, particularly when taking action against third parties. These rights are subject to certain limitations and defences aimed at preserving fair competition. For example, third parties may use their own name, geo- graphic indications or descriptive elements in good faith, provided such use is limited to informational or descriptive purposes, does not function as a trade mark and does not create confusion in the market. It is also permissible to refer to a trade mark to indi- cate the existence, availability or compatibility of products or services – eg, for the purposes of com- parative advertising – as long as such use is made in good faith and does not mislead consumers as to the origin of the goods or services. 2.6 Trade Mark Enforcement and Remedies In Ecuador, trade mark infringement generally occurs when a third party uses, without authorisation, a sign that is identical or confusingly similar to a registered trade mark in connection with goods or services in a way that may cause confusion or a risk of asso- ciation. This includes use on products, packaging, advertising or any commercial activity involving the sign. It also covers broader situations, such as taking unfair advantage of a mark’s reputation or weakening
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