IPWatchdog – Ecuador May Soon Reap the Benefits of the Patent Prosecution Highway

prosecution-highway-patents-ipwatchdog-Francisco-Gallegos

DETAILS

DATE: 2-11-19

TEAM MEMBERS IN THE NEWS:

-Francisco Gallegos

MEDIA: IPWatchDog

Ecuador has been participating in a pilot program of the Patent Prosecution Highway (PPH) since 2016 but has as of yet failed to implement the system for a number of reasons. However, with the announcement in July that Ecuador may join the Pacific Alliance next year under its new President, Lenin Moreno, and a general market-friendly shift in government, it is expected that the PPH could soon become effective.

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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

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

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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.