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.