WTR Dialy – Ecuadorian IP Office deals blow to parasitic trademark applications

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DATE: 30-08-19

CORRALROSALES IN THE NEWS: 

-Ian Wall

MEDIA: WTR Dialy

Our Associate Ian Wall has published an article in WTR Daily explaining and reflecting on the resolution of the Ecuadorian IP Office in which they accepted the opposition filed by the cosmetic brand Huda Beauty against the application for an identical mark. As explained by Ian, in addition to the rejection of the application, the Ecuadorian IP Office was responsible for reviewing the WIPO online trademark database to verify the right in the opponent’s country of origin, and to accept the aforementioned online results as evidence of such right.

“Ecuador’s trademark system is based on the rst-to-le principle. This means that simply using a mark in Ecuador confers few or no rights. The problems faced by brand owners in Ecuador that fail to secure registration of their trademark rights is compounded by the fact that the authorities have been slow to recognise even famous marks that are not yet in use in the country”, tops the article Wall..

This decision represents a relaxation of the evidentiary requirements and demonstrates a proactivity rarely seen from the Ecuadorian IP Office. This suggests the willingness of the Ecuadorian trademark authorities to protect large brands against applications for parasitic marks.

“The IP Oce incorrectly failed to acknowledge the priority claim and proceeded to reject the opportunistic application on the basis of Article 6 quinquies of the Paris Convention. More importantly, the IP Oce took it upon itself to review the online WIPO trademark database with regard to the opponent’s country of origin right and to accept the online entry as evidence of this right”, as explained by Ian.

If you want to read the full article, click here.

Recognitions: Chambers and Partners & LACCA

CorralRosales has been recognized once again as a leading firm in Ecuador according to the prestigious international legal directory Chambers and Partners and the Latin American Corporate Counsel Association (LACCA).

The English legal directory Chambers and Partners has recognized CorralRosales in the practice areas listed below:

  • Intellectual Property (Band 1)
  •  Corporate/Commercial Law (Band 2)
  •  Competition Law (Band 2)
  • Labour Law (Band 2)
  • Dispute Resolution (Band 3)

In this latest edition of Chambers and Partners, our Partner, María Cecilia Romoleroux renews her national leadership as an expert lawyer in the practice of Intellectual Property. On the other hand, our Partner Xavier Rosales, for the second year in a row is recognized as the only Ecuadorian lawyer to obtain Band 1 for the corporate practice. Also, he has been recognized as one of the best lawyers in competition law obtaining in this way Band 2 in this area. On the other hand, our Partners Edmundo Ramos and Santiago Palacios maintain their position as leading lawyers in the areas of labour law and dispute resolution, respectively. While our Partner, Andrea Moya, leader of the of the firm’s tax area, stands out on the board less than a year after of her appointment as a partner of the firm. Finally, our Senior Associate, Martha Villagomez, stands out as one of the best senior lawyers in Ecuador’s labour practice.

Finally , our Partners, Xavier Rosales and Maria Cecilia Romoleroux have been again highlighted as lawyers of reference in Ecuador, according to the latest edition of the prestigious Latin American Corporate Counsel Association. Once a year, the members of this Association (top general counsels of the region) nominate those who consider the best lawyers in their respective specialties.

Evolution of the Legal Sector in Ecuador 2008-2018

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DATE: 10-08-19

CORRALROSALES IN THE NEWS: 

Francisco Corrales

MEDIA: Idealex

To better understand the legislative evolution in this decade, it is necessary to take into account that the presidency of the Republic was exercised by a single character from 2007 to 2017: Rafael Correa, an unprecedented case in Ecuadorian history. There have been presidents who have exercised the presidency for a total of more than 10 years, but not continuously.

In 2008 a new Constitution, the twenty-second, was issued for which a Constituent Assembly was convoked. Its mission was to draft a political letter which to enter into effect required the favorable vote of the majority of citizens expressed in a referendum convoked for the effect. President Correa had an absolute majority in the Assembly and managed to have the 2008 Constitution built to suit his political project: The Ecuadorian version of the so-called 21st Century Socialism. The main ideologues of this movement who played the same role in the constitutions of Venezuela and Bolivia were two Spanish professors belonging to the extremist group “Podemos”.

The 2008 Constitution that currently governs the country, with 23 modifications introduced in three separate occasions, consists of 444 articles, 30 transitional provisions and a transition regime developed in 30 additional articles. The constitution has 52,831 words, compared to that of 1998 with only 29,162 words. It is a convoluted, contradictory, incoherent, and regulatory political letter which strengthens the presidential power to the extreme. In addition, it was shielded in such a way that its reform requires long procedures along with qualified majorities and for certain matters even the convocation of a new Constituent Assembly.

To consolidate the indefinite political power of the XXI Century Socialism sought in Ecuador during the period under review, large numbers of codes and laws were dictated; most of them penned by the presidency of the Republic. There is hardly any law whose initiative came from the Legislative Assembly itself. The assembly members of the political group led by President Correa were an absolute majority which allowed them, without the need for agreements or alliances, to approve as many laws as they considered necessary to suit their interests.

Among others, the following laws were issued: Organic Monetary and Financial Code, Commercial Code, Organic Code of Territorial Organization, Autonomy and Decentralization, Organic Code of Judicial Function, Administrative Organic Code, General Organic Code of Processes, Code of “Ingenios” (Organic Code of the Social Economy of Knowledge, Creativity and Innovation), Organic Law of the Legislative Function, Law of Jurisdictional Guarantees and Constitutional Control, Organic Law of the Council of Citizen Participation and Social Control, Organic Law of Higher Education, Organic Electoral Law and Political Organizations, Organic Law of Ombudsman, Organic Law of Land Transportation, Traffic and Road Safety, Organic Law of the National Public Procurement System; To this extravagant number of codes and laws, we must also add reforms of all kinds due to the fact that 11 reforms were issued in the period under review only with regard to tax laws.

Therefore, it is correct to affirm that between 2007 and 2017 Ecuador endured a legislative incontinence of new laws, reforms and counter reforms that have thwarted the institutional and legal structure of the Republic. The vast majority of members from this movement in the government have had the sole goal of strengthening the presidential power and facilitating the fulfillment of the political objectives of the group that held power, that is, its indefinite command of the Republic. This situation has become such a problem that several private and public sectors have suggested that the least traumatic way to end the current legal chaos would be to convoke a referendum in which the people would repeal the 2008 Constitution replacing it with the 1998’s. Therefore, the legislature would adapt the current secondary laws to the constitutional norms of 1998.

If you want to read the news, press here

Update of customs regimes in the Andean Community

The Andean Community Commission approved Decision 848, through which the alignment of Customs Regimes is updated to facilitate foreign trade operations in the region.

With the purpose of simplifying the operations carried out in the customs of Bolivia, Colombia, Ecuador and Peru, countries member of the Andean Community, the regulatory alignment was updated on the following topics:

– Form and deadlines for submission, transmission, correction and modification of the cargo manifest.

– Authorization for the creation of temporary deposits and term of permanence of merchandise.

– Opportunity and deadlines for submission, correction and documents that accompany the customs declaration of goods.

– Presence of the declarant in the physical examination.

– Deadlines for:

  • Re-importation in the same State;
  • Temporary admission for re-export in the same State;
  • Temporary admission for active improvement; and
  • Final export.

– Incorporation of the concept of Special Economic Development Zone: A duly delimited part of the national territory of each Andean Community Member Country, in which the goods entered there, are considered as if they were not within the community customs territory, with respect to import duties and taxes along with surcharges that may apply.

Decision 848 repeals Decisions 671 and 716, and entered into force on Friday, July 26, 2019, date of its publication in the Official Gazette of the Cartagena Agreement No. 3699. However, in accordance with the Fifth Final Provision, this norm will enter into force in the Republic of Colombia forty-eight (48) months following its publication date.

On the other hand, through Decision 846 of July 26, 2019, the Andean Community Commission stipulated that free zone products or merchandise will benefit from the tariff relief stipulated in the Cartagena Agreement Release Program, as long as they comply with the rules of origin of the Andean Community.

Gustavo García
Attorney of Counsel at CorralRosales
ggarcia@corralrosales.com

The scope of protection of a brand facing the discretion of the Intellectual Property Authority. Case PROZOL vs. PREZOIL.

The Ecuadorian Intellectual Property Office rejected an opposition filed by the owner of PROZOL, thereby allowing the registration of the PREZOIL, based on the finding that the respective goods were not the same.

On its way to reaching its conclusion, the IP Office’s reference was information found on the opponent’s web page, instead of the information contained in the registration certificate issued by the same authority.

Any sign that is capable of distinguishing goods or services in the market can be registered as a trademark.  The protection that such registration provides is directly related to the goods or services covered.

Ecuador aheres to the International Classification of Goods and Services for the Registration of Marks —Classification of Nice—, which serves to differentiate and to delimit the protection of a mark according to the class in which the specific applied-for goods or services are included.

The scope of protection of a registration is directly related to the goods or services it covers. Such relationship is so fundamental that a specific requirement with which every application must comply, in accordance with Decision 486 of the Andean Community Commission, is to list the specific goods or services that will be protected and the corresponding international class.

The opposition filed by the owner of the PROZOL mark:

The company IMPORTADORA PEREZ JURADO ASOCIADOS CIA.  LTDA. applied for the registration of PREZOIL at the Ecuadorian Intellectual Property Office. Subsequently, PROTÉCNICA INGENIERÍA S.A. filed an opposition claiming that the similarity with its PROZOL mark would confuse consumers and cause a risk of association.

In this case, the Ecuadorian IP Office expressly recognized that the goods specifications were similar. However, it decided to reject the opposition, since it did not consider that there was a relationship between the goods, despite relating to the same international class, and despite the fact the PREZOIL application included goods specifically protected by PROZOL, as shown in the following table:

Brand International class Protected products
PROZOL (registered) 01 Products: Chemical products for the industry.
PREZOIL (requested) 01 Products: Chemical products for industry:

– Brake fluids

– Liquids for hydraulic circuits

– Coolants

In its analysis, the Office did not take into account the information contained in the registration certificate for PROZOL, which clearly identifies the goods for which the registration was requested and obtained.  Rather, the IP Office surprisingly and in direct violation of the Andean legislation and jurisprudence, decided that the rights in PROZOL were only applicable to one type of product: “emulsifying agents for pastry.”

To reach this conclusion, the Intellectual Property Authority reviewed PROTÉCNICA INGENIERÍA S.A.’s web page and considered that the information obtained from that source was sufficient to determine that the product above (emulsifying agents for pastry) was the only one protected by the PROZOL mark, completely omitting the considerations above on the scope of protection of a registration.

Within the resolution at issue, there was no analysis that justifies the legal criteria used to determine that the scope of protection of a trademark falls solely on a product mentioned on a web page; neither does it explain why the goods protected by the PROZOL registration were not taken into account, in accordance with the registration granted by that same authority.

This result could cause a series of adverse effects and generates legal uncertainty for trademark owners, since if the position stated in the case examined stands, it would not be possible to have assurance about the scope of protection of a registration.  In an even more delicate scenario, it would imply that the Ecuadorian IP Office could consider that some goods are outside the protection of a registration without greater support than the information that appears on the Internet or any other sources outside the procedure.

Katherine González
Asociatte at CorralRosales
katherine@corralrosales.com


[1] Article 139, literals f) & g) form the 486 decision of the CAN Comission.
[2]  OCDI-2019-524 resolution dated june 10th 2019. Case file: 15-5435-RA-1S-RR-2017.

EKOS – Personal data protection: legitimate means for handling data

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DATE: 16-08-19

CORRALROSALES IN THE NEWS:: 

-Rafael Serrano
-Michael Wollman

MEDIO: Ekos Magazine

With the forthcoming issuance of the Personal Data Protection Law, companies must adapt their procedures to collect and carry out the appropriate handling of the personal data of their consumers or customers.

The correct handling of personal data is one of the main tools for companies to adequately market their products; not only to protect the personal information of their customers, but also to benefit their businesses.

The main purpose of the draft Law is to regulate the exercise of the right to protection of personal data, self-determination information, and circulation of this type of data (Article 1).

The legitimacy principle (Article 9) establishes the conditions or situations in which the collection and processing 1 of personal data by companies is legitimate and lawful:

  1. Consent of the personal data owner to the sharing of his information for a specific purpose.

The consent must be free, specific, unequivocal, prior and informed. A company may share someone’s personal data when he authorizes or gives consent knowing the purpose of the use of his information.

  1. Legal obligation for the sharing of personal data.

In this case, the law orders the company to share the personal data of an individual.

Example: The Labor Code requires employers to have certain personal information of their workers such as address, marital status, number of children, and some other relevant information. In this case the will of the data owner is irrelevant since it is the law that orders the sharing of this information.

  1. Contractual relationship.

A company can use the data of an individual with whom they have a contractual relationship. The limitation to this use is related to the data necessary for compliance with contractual obligations and may not exceed the limits established in the contract.

Example: In a contract of sale of goods, the company cannot use the data of the individuals to send commercial promotions, except if there is a clause in the contract that expressly authorizes the sending of such promotions.

1 The Personal Data Protection Law project defines the handling as any operation performed on personal data; this includes collection, conservation, modification, transfer, among other actions.

  1. 4. Vital interests of the owner.

The sharing of data of a person may be carried out if through this process the vital interests of the owner are protected, such as the protection of fundamental rights.

Example: A company can share the personal data of a person if it helps to save the life of the individual, such as in a medical emergency.

  1. Order of a judicial authority or resolution of competent authority.

If through a ruling or a decision of the competent authority the delivery or processing of personal data is ordered, the company will be bound to do so without facing negative consequences.

The legitimacy of the sharing and use of personal data is not given only by the consent of his owner. Companies must analyze in each particular situation which of the above mentioned scenarios the handling of personal data applies, thus complying with the principle of legitimacy.

If you want to read the news, press here