Changes in acceptable evidence that demonstrate use when renewing a trade name

Andrea Machicado

A trade name, as defined in the Decision 486 of the Andean Community, Common Intellectual Property Regime (Decision 486) is any sign that identifies an economic activity, a business or commercial establishment. It is an official name under which an establishment conducts its business.

Article 191 of Decision 486 states that: “Exclusive right to a trade name is acquired through use by a legal person for the first time in commercial activities and ends when the use of the name or activities of the business or establishment using that trade name cease to exist.”

As with a trademark, a renewal for a trade name can be filed six months prior to the expiration date. A six -month grace period after the mentioned date is also available. Unlike a trademark, when filing a renewal for a trade name, proof of use is required by the IP Office.

Decision 486 allows National IP Offices to decide if they will request proof of use when renewing a trade name. In Ecuador, to renew a trade name, use must be proven as stated in article 420 of the IP National Law and article 256 of its Regulation.

Before the IP Law’s Regulation, which came into force on November 20, 2020, the local IP Office was restrictive in its requirements to be able to prove use of a trade name. Only certified copies of invoices that showed the trade name as how it was registered before the IP Office were accepted as evidence of use, as long as there have not been substantial changes. At least one invoice for each of the six months prior to the renewal application had to be submitted.

Now, the Regulation expressly determines which documents can be accepted as evidence of use. The local IP Office has expanded what they consider as suitable evidence of use such as :

  • Invoices
  • Accounting documents or audit certifications
  • Operating permits
  • Notarial downloads of web pages, social networks
  • Digital or written press
  • Advertisements

In this regard, the Court of Justice of the Andean Community has established the type of evidence that proves the real and effective use of the trade name in the market:

“1.1. However, among the criteria to be taken into account to demonstrate the real and effective use in the market of the trade name are commercial invoices, accounting documents, or audit certifications that demonstrate the regularity and quantity of the commercialization of the services identified with the trade name, among others.

1.2. Likewise, the following acts, among others, shall constitute use of a sign in commerce: introducing in commerce, selling, offering for sale or distributing products or services with that sign; importing, exporting, storing or transporting products with that sign; or, using the sign in advertising, publications, commercial documents or written or oral communications, regardless of the means of communication used and without prejudice to the rules on advertising that may be applicable.” [1]

Now that the IP Office has expanded its requirements and is abiding but what the laws and regulations state, it is possible for brand owners to continue to protect their trade names through renewals and maintain rights. The local IP Office has broken the paradigms it has maintained for decades broadening its perspective in reference to the valid and effective evidence that proves the use of a trade name in accordance with jurisprudence of the Andean Community.

[1] Court of Justice of the Andean Community. Proceeding 55-IP- 2020 June 21, 2021

Andrea Machicado
Associate at CorralRosales