- A recent resolution provides insights into how the grounds of bad faith and notoriety are applied in practice
- The IP Office requires a solid evidentiary foundation, especially for complex arguments such as bad faith and notoriety
- Obtaining a declaration of notoriety through a specific proceeding is a crucial
step when seeking to rely on notoriety
Background
The Ecuadorian IP system has increasingly emphasised the protection of fair competition and good faith in trademark registration. While litigants traditionally base nullity actions on confusing similarity, the strategic application of the grounds of bad faith and notoriety isgaining significant importance in administrative jurisprudence. A recent resolution from theIP Office provides valuable insight into how these concepts are being applied in practice.
The JEAN BOOK case
Case OCDI-2022-217-AN involved a relative nullity action based on the graphicalsimilarity of the contested mark with the earlier registered mark JEAN BOOK. The earliermark had been declared well known in Colombia. The plaintiff also argued that thecontested trademark had been registered in bad faith, constituting an act of unfaircompetition.
The resolution demonstrates the thoroughness with which the IP Office examined theallegations of bad faith and notoriety. While the plaintiff cited the notoriety of its mark inColombia as a central argument, the IP Office did not immediately accept this claim.Instead, it requested that the plaintiff bring a notoriety declaration proceeding in Ecuador.This highlights an important legal point: administrative authorities in Ecuador mustofficially declare a mark’s notoriety through a specific proceeding. This step is crucial forany legal strategy that seeks to use notoriety as a basis for a nullity action.
Bad faith is a legitimate ground for invalidating a registered trademark. In this case, theplaintiff successfully demonstrated bad faith. The defendant had initially offered goodsidentified by the mark ESTILO DENIM + GRÁFICA DE FIBRA. The owner of the JEANBOOK mark sent a cease and desist letter, asserting infringement based on thereproduction of a graphic element of its mark – namely, a denim fabric texture. Thedefendant acknowledged the infringement and committed to removing the goods from themarket. Despite this commitment, the defendant continued to file applications for severalnew marks that reproduced the core graphic element and overall concept of the JEANBOOK mark. This demonstrated the defendant’s prior knowledge of the notorious earliermark, which clearly indicated bad faith.
The resolution also included a comparative analysis of the conflicting marks, which is acritical step in any nullity action. The IP Office assessed the existence of a family of marks,to which the contested mark allegedly belonged. However, the IP Office rejected thisargument, stating that marks must be previously registered to form a family. Additionally,the IP Office concluded that, although the marks ESTILO DENIM + GRÁFICA DE FIBRA andJEAN BOOK did not share phonetic or orthographic similarities, they did share graphic andconceptual similarities.
Comment
The resolution underscores that the analysis should prioritise similarities over differences.It serves as a clear guide for the challenges and requirements involved in substantiating anullity action in Ecuador. The IP Office, in line with Andean jurisprudence, demands a solidevidentiary foundation, especially for complex arguments such as bad faith and notoriety.Mere allegations of a mark’s notoriety or bad faith are insufficient.
This case further highlights that a successful legal strategy goes beyond simpleaccusations; it requires robust documentary evidence and meticulous legal analysis to
safeguard legitimate IP rights.
Andrea Miño
Associate at CorralRosales
andrea@corralrosales.com