In Ecuador, the rights over a trademark are acquired exclusively through registration with the Trademark Office (SENADI), not by prior use. This means that unless a formal declaration of notoriety is obtained, evidence of a trademark’s use or recognition, in the opposition process, serves only as supplementary elements, not as conclusive rights. This distinction emphasizes the importance of securing a declaration of notoriety to establish a trademark’s standing.
High legal procedures costs, the proper collection of evidence, compliance with formalities, and the need to renew declarations of notoriety often generate a significant burden of expenses for trademark holders.
The Process of Declaring Notoriety in Ecuador
Ecuador has introduced a formal process for obtaining a declaration of notoriety under Resolution No. 002-2019-DG-NT-SENADI. Here are the key steps to follow:
- Application:
The trademark holder must apply with the following:- A formal request for notoriety recognition.
- Details about the trademark, including its nature and the territories where it is considered well-known. of prior registration or certified copies of an international registration.
- A list of products, services, or activities linked to the trademark.
- Applicant and representative information, including contact details and identification.
- Documentation proving the trademark’s reputation, such as sales data, advertising expenditures, and market studies.
- Examination by SENADI:
- The Ecuadorean National Intellectual Property Service (SENADI) evaluates the application within 15 days. The applicant must rectify any deficiencies within 10 days. This is a very short period of time; therefore, it is advisable to prepare all the evidentiary material in advance.
- Verification and Resolution:
- Once the application meets all formal requirements, SENADI evaluates the evidence and issues a motivated resolution declaring the trademark’s notoriety. This declaration is valid for seven (7) years.
- Publication and Certificate Issuance:
- The declaration is published, and a notoriety certificate is issued. A physical copy of the certificate can be obtained upon additional payment.
- Suspension of Ongoing Procedures:
- If a notoriety declaration is in progress, any overlapping procedures are paused until its conclusion.
Financial Considerations
Although the authority currently requires an official fee of US$3,500, the rule states that the official cost of obtaining a declaration of notoriety in Ecuador can range from US$3,270 to US$10,800, depending on the complexity of the process. This significant investment underscores the importance of assessing the need and potential benefits of seeking such recognition.
Limitations
The regulation establishes a seven (7)-year validity period for notoriety declarations. As the first declarations have only recently been granted, there are still questions about what the renewal process will be like after their expiration.
While obtaining a notoriety declaration strengthens a trademark’s position, in particular regarding pending and future claims, it is important to consider that it does not automatically override prior registered rights. It is necessary to initiate a separate process to cancel or annul prior rights.
Factors in Determining Notoriety
Ecuador’s regulations estate several determining factors to establish the notoriety of a brand, including:
- Public recognition in relevant sectors.
- Duration and geographical extent of trademark use and promotion.
- Investment in advertising and promotional activities.
- Sales performance and market penetration.
- The inherent or acquired distinctiveness of the trademark.
Notoriety declarations issued in other countries are valuable but not definitive in Ecuador. They are analyzed alongside the other evidence provided, such as market research, press articles, and advertising material.
In conclusion, while obtaining a notoriety declaration in Ecuador is a complex and resource-intensive process, it could play a crucial role in protecting a trademark’s reputation and market position. Titleholders should carefully prepare their applications and consult legal experts to navigate the procedural and evidentiary requirements effectively.
Janet Hernandez C.
ABREU &C ASOCIADOS
jhernandez@abreuip.com
