Solidarity Bike Race

solidarity-bike-race

Last Sunday, the CorralRosales team participated in the Niños de María foundation solidarity bicycle race.

As it has already become a tradition, on November 24 the Niños de María foundation organized its eleventh cycling race. Under the name “Record Niños de María, pedaleando por la educación de 300 niños”, hundreds of participants gathered to raise funds to pay for food and education of 300 children.

The Niños de María foundation, created in 1994 as a non-profit Catholic foundation, welcomes the most vulnerable children in our society into their schools and programs such as: the sewing project “Hilando Futuro”, choir, symphonic orchestra or folkloric dance.

CorralRosales is very committed to social causes. Therefore, we wanted to support this great solidarity initiative taking part in it, since all the money raised from the race registration will be used to support the Niños de María foundation school and projects.

“We decided to participate in this event not only because it allows us to put in our grain of sand and contribute to a better society, but also because it helps us strengthen ties between coworkers in a healthy environment,” says Verónica Fernández, Director of Human Resources of the firm.

The CorralRosales team, who wore a specially designed shirt for the occasion and competed under the business category of the race, was made up of both partners and administrative staff of the firm, and their families. The race route was 21-kilometer long and took place in the Chaquiñán de Cumbayá.

After the race, the team met again and was able to share some of the experiences and anecdotes of the day. Despite the fatigue from the race, everyone agreed with the words of one of the Partners of the firm, Francisco Gallegos: “It has been a pleasure to be able to enjoy an activity with family along with coworkers. Without a doubt an incredible experience that we recommend and that, of course, we are looking forward to repeating”.

solidarity-bike-race

solidarity-bike-race

solidarity-bike-race

solidarity-bike-race

solidarity-bike-race

Should filing a claim and not the summon interrupt the statute of limitation?

claim-summon-interrupt-statue-limitation

The amendment to the General Organic Code of Processes (COGEP), which entered into force on June 26, 2019, modified article 64(4) substantially modifying the interruption of the statute of limitations. Thus, before the reform, COGEP established that: “The effects of citations are… 4. Interruption the statute of limitations.” While after the amendment, it establishes that: “The effects of citations are… 4. Interruption of the statute limitations. If the lawsuit is summoned within six months of being filed, the interruption of the statute of limitations will be rolled back to the date in which the lawsuit was filed.”[1] Due to the amendment in reference, ¿is the right to legal certainty compromised?

Historically, the regulations governing civil procedures in Ecuador contemplated that the statute of limitations was interrupted only through citation. Since the first Civil Code enacted in 1869, until the last amendment to the COGEP entered into force, the citation of the lawsuit had been a concrete and verifiable date, that interrupted the statute of limitations. With the amendment, the interruption is rolled back to the date the lawsuit was filed, which is an unknown fact until the citation is made-, solely if the citation occurs within 6 months after the filing of the lawsuit. Keep in mind that the citation of the lawsuit is a fundamental factor, since only once it is achieved the litigation between the parties in conflict is locked and any legal terms begin to apply.

The Civil Code defines the statute of limitations as a way of acquiring goods or extinguishing rights for not having exercising those rights within the period determined by law[2]. Thus, a legal proceeding may be initiated within the time frame established in the law. If there were no statute of limitations, the right to legal certainty would be violated. It is the responsibility of citizens to initiate proceedings in due time and form or, to plead statute of limitation when having been sued and summoned once the legal term is exceeded.

Legal certainty implies, among other things, that the parties shall know the applicable rules when a process starts. The Constitutional Court has determined that “…the right to legal certainty is understood as the certainty in the application of the law that derives from the obligation of public authorities to respect the Constitution as a supreme law, and the rest of the legal system.” This right to know with certainty the enforcement of the existing norms in the legal system is violated the amendment since, rolling back the date for interrupting the statute of limitation to the moment the lawsuit was filed exclusively if the citation took place within six months, causes the defendant uncertainty.

For example, before the amendment, in a moral damage proceeding, were the statute of limitations ends 4 years after the perpetration of the act, the law allowed the defendant to know the legal framework for his defense. That is, the plaintiff was certain of the time frame stated in the law to exercise his right and initiate a proceeding. The amendment to the COGEP allows the interruption of the statute of limitation to take place not on the date the lawsuit is summoned, but on the date on which it was filed, undermining the defendant´s right to legal certainty.

To a greater extent, in the previous example, before the amendment, if the plaintiff filed a lawsuit for moral damage on the last day, that is, 3 years and 365 days, the statute of limitation would have ended. While with the amendment, if the lawsuit is filed on that same day, the statute of limitation would not have ended as long as the defendant is summoned within the following 6 months. That is to say, in the proceeding for moral damage, the plaintiff would have 4 years and six months for the lawsuit to be summoned and still rightfully exercise the respective proceeding, while before the amendment there were exactly 4 years to summon the defendant.

With the amendment of the article 64(4) of the COGEP, the legislator has allowed the lawsuit citation to interrupt the statute of limitation of the proceeding as long as the defendant is summoned within the following 6 months after the lawsuit is filed, which, in our criterion violates the constitutional right of the defendants for legal certainty.

Mateo Zavala
Associate at CorralRosales
mzavala@corralrosales.com


[1] COGEP, art. 64: “Art. 64.- Effects. The effects of the citation are: […]
4.” Interrupt the statute of limitations. If the lawsuit is summoned within six months of filing, the interruption of the statute of limitations will be rolled back to the date when the lawsuit was filed.”
[2] Art. 2392.- Statute of limitations is a way of acquiring things of others, or of extinguishing the actions and rights of others, for having possessed the things, or not having exercised said actions and rights, for a certain time, and concurring with the other legal requirements.

Counterfeiting and contraband

contraband-counterfeiting-eduardo-rios-corralrosales

The National Customs Service of Ecuador has recently created the Specific Task Force and the Customs Surveillance Corps to combat counterfeiting and smuggling, which seriously affect legitimate business activities as well as the Treasury.

A large majority of the counterfeit goods in Ecuador and in other countries of the region are imported, so those who introduce such items in the marketplace are in the majority of cases are committing the offence of dealing in contraband.

The local production of counterfeits in Ecuador, especially luxury brands and electronic products, is low. Therefore, most of the counterfeit products of recognized or luxury brands (wallets, watches, clothing, electronics, cell phone accessories, etc.) are manufactured outside Ecuador and their entry into the country is almost always illegal.

The illicit entry into the country of counterfeit products prompts the direct action of special Customs groups responsible for control and seizure, and destruction when appropriate. All this is done in order to remove from the market those products that, in addition to being illegal due to their origin, defraud the Treasury of tariffs and other taxes corresponding to imports.

Article 301 of the Criminal Code classifies the crime of contraband punishable by imprisonment for three to five years, and a fine of up to three times the customs value of seized products if said value is equal to or exceeds ten basic unified wages. (Currently US $ 3,940.00)

The same code establishes counterfeiting as an aggravating circumstance of the offence, in which case the maximum penalty will be imposed.

In an astute move, the National Customs Service of Ecuador created the “Specific Task Force”, made up of inspectors of the highest rank and proven reputation inside and outside the institution. This task force was also assigned auxiliary personnel that share the same characteristics and have demonstrated absolute honesty and dedication to their job.

A personal experience confirms what was stated above. On one occasion when the group had to wait approximately two hours to proceed with a seizure, members of the mentioned group decided to make good use of that time carrying out a fieldwork in the surrounding areas; this allowed them to seize more than 15,000 smuggled cigarettes that had entered the country. Having done that, they proceeded with the scheduled seizure.

In each counterfeiting case that we have worked on, we collaborated with Customs authorities providing information and identifying possible seizure targets. Also, when appropriate, the formal complaint was filed, and to prevent the counterfeit products from returning to the market, their condition was corroborated.

With our presence in the operations, offenders see their options to hinder the seizure procedure limited, because when the representatives of the brand owner certify that the seized products are counterfeit, there is no doubt or speculation about their origin.

Local industry and formal commerce in general have made a great effort to comply with mandatory technical regulations, especially labeling. This aspect is very helpful in prosecuting these offences because if the products do not meet the mandatory labeling requirements, they can be considered contraband. Therefore, their seizure is ordered, regardless of whether or not they are counterfeit.

We have decided to continue supporting Customs’ work in the fight against counterfeiting and smuggling, providing the tools to make their work more and more efficient. The constant training of personnel carrying out legitimate activities affected by these offences is another way of supporting the authorities in this work.

 

Eduardo Ríos
Senior Associate at CorralRosales
eduardo@corralrosales.com

The suspension of the administrative act on Intellectual Property

administrative-act-intellectual-property-ruth-holguin

The suspension of the execution of an administrative act is an exceptional provision that can be issued by an administrative or judicial authority. It is a precautionary measure that proceeds only when the execution of the administrative act produces unrecoverable or very difficult remediation losses due to the violation of the rights of the entity being administered. The suspension means that the administrative act does not apply until there is a final resolution.

This figure has limited application in the area of ​​Intellectual Property, since to obtain the suspension of the administrative act in judicial headquarters; the entities being administered must demonstrate that, for example, the registration of a trademark or patent violates their rights; or, that the registration of a trademark was improperly canceled due to lack of use.

A more detailed analysis:

  1. An opposition to a trademark or patent application might be provided by law for the following reasons: lack of distinctiveness, risk of confusion or association, not meeting the requirements of patentability, etc.
  2. The Ecuadorian Intellectual Property Office denies the opposition and gives way to registration, so that the affected party can challenge that decision before the Contentious Administrative Court, requesting, in addition, the suspension of the act, because the affected party considers that its execution would violate its rights in an irreparable way.
  3. If the request is granted, registration of the trademark or patent is suspended. After the judicial process, which has a minimum duration of three years, the sentence is issued. For the purpose of this analysis, we assume that the administrative resolution is ratified, granting the registration and denying the opposition.

In this scenario, did leaving the applicant without the ownership of his registration for three years violate his rights?

This would be the main conflict that could cause the suspension of the execution of an administrative act in Intellectual Property.

What happens in practice?

The judicial authority generally does not accept the request for suspension of the administrative act because, although the existence of irremediable loss caused by the execution of the act can be demonstrated, the rights of the person who obtained the registration of the trademark or the patent are also at risk.

It must be considered that most conflicts over Intellectual Property derive from trilateral administrative procedures, in which the administrative authority and two interested or administered parties intervene. Therefore, the suspension of the administrative act in this branch is especially controversial and unusual.

In summary, the substance of the dispute is that the contentious-administrative judge must assess whether or not the suspension of the decision of the administrative authority applies, taking into account the losses that could be suffered by both; the party that achieved the registration of the trademark or patent and the other party that considers their rights affected by that registration as well. There will always be an important degree of subjectivity, but the judge must receive comprehensive and true information from the parties in conflict to form his or her judgment.

Additionally, the judge that resolves the suspension of the administrative act, until there is a final decision on the conflict, should have the possibility of requiring sufficient guarantees to respond for the losses that may arise from the suspension if the final decision ratifies the resolution of the administrative authority. A reform to improve the application of the law would be to demand that enough guarantee´s be determined – the judge himself should set its amount – to grant the suspension of the administrative act.

Ruth Holguín
Asociada Senior en CorralRosales
ruth@corralrosales.com

The distribution contract: competition issues and its regulation in the new Code of Commerce

distribution-contract-ana-samudio

From 1997 and until the Code of Commerce came into effect last May 29, 2019, the distribution contract did not have a specific regulation. It was governed by the general rules applicable to trade acts, contracts and regulations on jurisdiction.

On December 31, 1976, the Law for the Protection of Agents or Distributors of Foreign Companies (Distributors Law) was enacted, which regulated the commercial relationship between an entity not based in Ecuador and a person – be it natural or legal- designated as representative, agent or distributor. This Law mainly provided a special protection regime for the distributor / agent. Thus, among the most relevant provisions included, the grantor was not authorized to unilaterally terminate the contract even by expiration of the term established in the contract itself, save for specific causes established in the Distributors Law, which in turn had to be qualified by the competent judge, and established a method of calculating large compensation for damages.

On July 5, 1996, the Distributors Law was amended, fundamentally limiting the compensation amount, and on September 19, 1997, it was repealed. Even so, the rights and obligations born while the Distributors Law was in force were maintained. The Antitrust Law, enacted on October 2011, introduced concepts such as exclusivity – of products, territories, customers or types of customers – that a priori seemed to be in conflict with the free competition regime, which required a robust support – from the economic and market techniques – that would legitimize its stipulation.

Since May 29, 2019 the new Code of Commerce (Code) clarified the picture, clearly tracing the rules governing the distribution contract. The most prominent are:

  • The distribution contract is the authorization in which a party called the grantor or principal confers on another party called concessionaire or distributor the possibility of selling products, providing services, or a combination of both, in a given territory.
  • In general, it leaves to the will of the parties the conditions of these contracts, such as: exclusivity of territory, exclusivity of product, minimum volumes and periodicity in purchases, among others; and establishes rules that will be applied in the absence of stipulation by the parties or that are contrary to the Antitrust Law.
  • Establishes the obligation of the supplier to deliver commercial and technical information necessary for the best distribution of the goods or services stipulated in the contract.
  • Allows the supplier to make direct sales without the participation of the distributor, unless otherwise agreed.
  • Prohibits the supplier from limiting the possibility of the distributor to make sales, through the internet, except for reasons of public health, consumer safety or legal prohibition.
  • Determines that, if a term of validity is not established, distribution contracts are considered as indefinite and may be terminated by either party, prior a 90-day notice. The Antitrust Law states that termination without a cause with no prior 30-day notice, could be considered as abuse of market power in an economic dependency relationship.
  • The serious or repeated breach of the contract that is not remedied within 15 days from the notification of the breach, will result in its termination, and the compliant party will be entitled to compensation for damages.

Ana Samudio
Senior Associate at CorralRosales
asamudio@corralrosales.com

Delayed or Canceled Flight? What the passenger does not know

flight-delayed-canceled

Your luggage was checked, you boarding pass is at hand, you pass through the security filters, waiting for the call to board, and suddenly, you look at the information panel in the waiting room and see the message nobody likes to get: “delayed or canceled flight”.

Although the passenger does not know the causes of flight delays and cancellations and everything is in apparent normality at the airport, the operation of a flight implies the existence of several factors that must be perfectly aligned.

The following are the most common causes of flight delay or cancellation.

1.- Weather conditions

Heavy rains and snowfall during the winter months are well known; these can delay ground operations and hinder landing or take off maneuvers. The sunny summer arrives and the season of greatest passenger traffic begins: family vacations, meetings with friends, sunny days to enjoy, and a climate that would seem pleasant to fly. However, the combination of high temperatures and summer winds can surprisingly result in a storm that may result imperceptible at ground level.

During the summer months, the hot air rises and interacts with the cold air that is in the upper atmosphere. This mixture causes water vapor to condense and storm clouds with lightning to form at great heights; the lighting cannot be seen from the surface.

In general, airlines coordinate with Air Traffic Control if a change in landing or take-off routes is needed to avoid these thunderstorm clouds. But the operation could continue to represent a risk for ground workers who are on the platform carrying out activities prior to the departure or arrival of flights, such as aircraft fueling, luggage transfer, inspection and cleaning of aircrafts, etc.

Then, due to weather changes, delays or cancellations of scheduled itineraries occur. In these cases, the airline is exempt from the obligation to compensate passengers for the damages that they could have suffered as established in the regulations of “Provisions for Compensation to Users for Flight Delays”, because the facts are not attributable to the company.

2.- Operational modifications

For the optimization of operations and greater efficiency in fuel consumption, an aircraft may be scheduled to fly to several destinations. In this case, a delay in another station could cause what is called “drag delay”; that is, a problem in another airport could result in a delay in the operation of the next flight in some other point.

Likewise, there are operating conditions that must be met to ensure flight safety, such as checking that the crew has complied with the mandatory rest time stated in the aviation technical regulations or ensuring that the members responsible for the flight operation are fit to embark. It is uncommon, but there have been cases in which there is an unforeseen health problem in an officer or senior cabin crewmember, which represents a decrease in the crew that is impossible to cover immediately.

Ecuadorian aeronautical regulations control the operation in cases of early departure or delays in the time of takeoff / landing. Resolution 120/2017 determines the obligation for the airline to notify, with due justification, any change in the time of departure and arrival, applying international processes and standards.

Unscheduled Maintenance:

The airlines comply with an aircraft maintenance schedule, previously approved by the local Aeronautical Authority, who, as the controlling body, will verify compliance. These are called scheduled maintenance. But aircrafts are machines and therefore susceptible to unforeseen damage, which may cause inevitable delays in the operation of a flight. Each technical problem must be documented and recorded in accordance with the protocol established in the manuals of each company; this is done to ensure the safety of passengers, crew and ground personnel.

The airlines that operate in Ecuador have programs, policies and manuals that govern each operational process of their flights. In the case of international airlines, these procedures are subject to a certification process carried out by the Directorate General of Civil Aviation based on the Technical Aviation Regulations, known as RDAC. For international operators it is the RDCAC 129 and for domestic airlines the RDAC 121.

Airlines publish constant and first-hand information in their social networks when events like these happen, and seek to offer the passenger immediate solutions, to the extent possible, so that they arrive safely at their destination.

Finally, for airlines, the security of their operations will always come first. Therefore, when conditions are not safe for a flight, delays and cancellations, even if they are annoying for users, are unavoidable for the benefit of the passengers themselves, crew, and the ground workers.

Verónica Olivo
Associate en CorralRosales
volivo@corralrosales.com

Ecuadorian Intellectual Property office upholds the distinctiveness of the three-dimensional trademark registered by Crocs, INC.

three-dimensional-crocs

Through Resolution No. OCDI-2019-0618[1], the Ecuadorian Intellectual Property Office confirmed that the design of CROCS footwear is capable of being recognized by consumers, and also allows consumers to differentiate it from the products of competitors, since it has its own special elements that give the product a different appearance, and is not common or ordinary.

With this decision, the distinctiveness of the three-dimensional design of CROCS footwear in Ecuador was upheld, and it is confirmed that only CROCS, INC. may market goods under such design, having the exclusive right to prevent third parties from using and marketing the same or similar goods.

In 2015, CROCS, INC. obtained the registration of the mark THREE-DIMENSIONAL DESIGN (3D BAYA SHOE DESIGN) to protect “footwear”.

The three-dimensional mark has its own characteristics, which differentiate it from the traditional denominative, figurative and mixed mark, since with this specific type of marks, an object that occupies a volume in space is protected; that is, it is the shape of a product or its packaging. Therefore, the distinctiveness of this type of marks rests in the shape and relief as a whole, among other distinctive elements that are added into its configuration.

In 2017, JHON ALBERTO FIGUEROA VIVANCO applied to the Ecuadorian Intellectual Property Office for the nullity of the mentioned registration, claiming that it was a generic shape for footwear and therefore not for exclusive appropriation by one entity. Additionally, the claimant pointed out that the design granted a functional or technical advantage to the product, and so could not be protected as a trademark according to the law.

Article 135 of Decision 486 of the Andean Community establishes that the following signs cannot be registered as trademark:

“(…)

  1. those that lack distinctiveness;
  2. those that consist exclusively of usual forms of the products or their packaging, or of shapes or characteristics imposed by the nature or the function of the product or service in question;
  3. those that consist exclusively of a shape or other elements that give a functional or technical advantage to the product or service to which they apply; (…) ”

During the proceedings, CROCS, INC. was able to show that the contested registration did meet the requirements to be considered a three-dimensional design, even filing evidence of registrations obtained over the same design in several other countries, in which, as in Ecuador, the distinctiveness of their unique designs had been recognized.

With regard to the functional advantage claimed by the plaintiff, the IP Office determined that the arbitrary elements of the design are not dictated by function, since the exclusion of such shapes, reliefs, crevices and holes does not prevent the natural use of the product.

Katherine González H.
Associate at CorralRosales
katherine@corralrosales.com


[1] Proceeding No. 17-1679-RV-2S dated 18 July 2019.

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.

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.