- Grupo Bimbo argued that the pandemic constituted a force majeure event that severely disrupted the commercialisation of goods under the DONETTES mark
- The IP Office disagreed, stating that certain products, such as Class 30 goods, were consistently treated as essential items during the pandemic
- The DONETTES mark encompassed a broad array of goods, thus offering multiple potential avenues through which to demonstrate continued commercial use
In a landmark decision with significant implications for trademark owners (Resolution No OCDI-2025-388, Proceedings OCDI-2021-547-AC), the Ecuadorian IP Office has upheld a non-use cancellation action against the trademark DONETTES, owned by Grupo Bimbo SAB de CV, emphasising the stringent evidentiary standards required to demonstrate trademark use, even under extraordinary circumstances such as a global pandemic.
Background
The applicable legal framework, Andean Community Decision 486 Establishing the Common Industrial Property Regime, precisely defines the term ‘use’. It states that a trademark is considered used when the associated goods or services are effectively placed on the market or made available in a manner and quantity consistent with standard commercial practices, considering their inherent nature.
In its defence, Grupo Bimbo contended that the onset of the covid-19 pandemic in 2020 – a period falling squarely within the relevant timeframe – constituted a force majeure event that severely disrupted the commercialisation of the goods protected under the DONETTES mark. Grupo Bimbo further requested that the IP Office grant a four-month extension to the relevant period, citing the state of emergency declared in Ecuador. During this period, constitutional guarantees, including freedom of movement andassembly, were temporarily suspended, and numerous public institutions, such as the IP Office itself, suspended deadlines forjudicial and administrative matters.
Decision
The IP Office meticulously assessed these arguments. While acknowledging that the state of emergency imposed restrictions oncertain non-essential activities, the IP Office underscored that essential sectors, such as food production, distribution and sales,were explicitly exempt from many of these limitations. Further, it noted that commercial channels, such as home delivery andtelecommunications services, remained fully operational and continued to facilitate commerce throughout the crisis.
In evaluating Grupo Bimbo’s claims, the IP Office paid particular attention to the nature and scope of the goods covered by theDONETTES mark. It highlighted that some goods, such as bakery and pastry goods (Class 30), were consistently treated asessential items during the pandemic. Moreover, the DONETTES mark encompassed a broad array of goods, thereby offeringmultiple potential avenues through which Grupo Bimbo could have demonstrated continued commercial use.
Ultimately, the IP Office concluded that the pandemic, while undeniably disruptive, did not prevent Grupo Bimbo from putting themark to genuine use across the various protected goods. Consequently, the IP Office held that Grupo Bimbo’s arguments, includingthose related to force majeure, were inadequate to justify non-use.
Comment
This decision serves as a strong precedent for the use of trademarks. It strongly reinforces the principle that trademark rights arefundamentally conditioned on their actual and effective use in commerce. Further, it clarifies that defences based on force majeure or similar extraordinary circumstances will be construed narrowly, particularly when alternative commercial channels or exemptedproduct categories exist, or where the exceptional circumstances did not unequivocally impact the protected goods. In times ofcrisis, trademark owners are urged to proactively preserve clear, contemporaneous evidence of use across all possible channels tosafeguard their marks from cancellation due to non-use.
Andrea Miño
Associated at CorralRosales
andrea@corralrosales.com
