Trade and Service Marks

– Organic Code of the Social Economy of Knowledge, Creativity and Innovation, published in the Official Register Supplement No. 899, in effect since December 9, 2016.
– Regulations to the Organic Code of the Social Economy of Knowledge, Creativity and Innovation, published in the Official Register Supplement No. 9 of June 7, 2017.
– Decision 486 of the Cartagena Agreement, adopted by Ecuador in September 2000.
– Constitution of the Republic of Ecuador, published in the Official Register No. 449 of October 20, 2008, in effect since year 2008.
– Ecuadorian Intellectual Property Institute’s Resolution No. 3, published in the Official Register No. 203 of May 31, 2010. (New administrative tariffs).
– Ecuadorian Intellectual Property Institute’s Board Resolution No. 006-2012, published in the Official Register No. 815 of October 23, 2012. (New administrative tariffs regarding administrative services for patents, industrial designs, plant varieties and applications for three-dimensional trademarks).
– Ecuadorian Intellectual Property Institute’s Resolution No. 003-2014 CD-IEPI, published in the Official Register No. 326 of September 4, 2014. (New administrative tariffs).

Membership in International Conventions

– Convention on Patents of Inventions, Designs and Industrial Models, of Buenos Aires, Argentina (August 20, 1910), published in the Official Register No. 242 of August 5, 1985.
– Agreement on the Rights of Intellectual Property related to Commerce (ADPIC), published in the Official Register No. 977 of June 28, 1996.
– Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to which Ecuador acceded as a member of the WTO on June 28, 1996.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 22, 1999, published in the Official Register No. 244 of July 29, 1999.
– Decision 486 of the Cartagena Agreement, in effect since December 1, 2000.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), party since April 2, 2005.

Filing

Applicant: individual or legal entity, national or foreign citizen. 

Foreigners and nationals not living in the country: must appoint a legal representative by a legalized power of attorney. 

Trademarks of foreigners: national or foreign trademark owners have the same rights. 

Definition: trademarks are distinctive marks of authenticity through which the products of particular companies or the vendible commodities of particular merchants may be distinguished from others. 

Service mark: registrable.

Not registrable: marks which consist of (a) usual shapes of the products or containers, or in the characteristic natural form of such products or services; (b) forms or indications making direct reference to the species, quality, quantity, destination, value, place of origin or other characteristics of the products or services; (c) marks contrary to law, morals, public order, good customs; (d) marks that appropriate the rights of others; (e) marks producing confusion amongst the consumer public.

Priorities: in concordance with the Buenos Aires Agreement, the Andean Pact, and the Intellectual Property Law, acceptance of a trademark application in another member country gives an applicant a six-month priority in which to apply for registration in Ecuador.

Classification: International Classification (Nice Agreement, 1957). The registration of a mark and its protection extend to only one class per application. To register a mark in several classes, separate applications are required for each class, with separate taxes and processing fees.

Territory covered: the entire country.

Filing requirements to file an application (to be sent to resident agent):
All applications should now be submitted online. Therefore, in order to file a trademark application it is essential for the applicant to obtain a virtual box for future notifications.
The required data and documents are the following:
1. Power of attorney, authenticated by Apostille;
2. Applicant’s full name, address and nationality;
3. For devices and mixed trademarks only: .jpg format of device;
4. Trademark name;
5. Trademark type;
6. International classes or protected types;
7. Priority documents;
8. Payment fees.

For renewals:
1. Power of attorney, authenticated by Apostille.

For assignments:
1. Power of attorney, authenticated by Apostille;
2. Written Assignment Agreement signed by assignor and assignee (legalization at an Ecuadorian Consulate is advisable but not compulsory).

For a change of name or address:
1. Change of name/address document, authenticated by Apostille;
2. Power of attorney in the new name/address, authenticated by Apostille.

Electronic filing: available; online procedure in force since May 2014. 

Electronic signatures: are not accepted (only wet signatures). Scanned copies of documents are accepted, however, the original must be sent at a later date.

Examination Procedure

Examination: the Trademark Office examines the application for compliance with the above requirements and Ecuadorian law.

Amendment of application: if after examination, it appears that the application does not comply with the requirements of the law (including the documents referred to above), the applicant will be given thirty days to amend the application and submit all proper documents and/or make necessary corrections.

Disclaimers: available.  

Letters of consent: are accepted, must be apostilled, or notarized if issued in Ecuador.  

Publication: if the application meets all the document and legal requirements, an extract of the application is published in the Industrial Property Gazette. 

Opposition: must be made within thirty days of the application’s publication in the Industrial Property Gazette, by anyone presenting well-founded observations which put into question the registrability of the trademark. Once an opposition has been filed at the Trademark Office, the applicant will be notified of the opposition and be given thirty days to answer the opposition (further extension of thirty days no longer available). If the Trademark Office finds, after reviewing the applicant’s answer, that the opposition has merit, this entity will order the applicant to submit further proof in defense of his application. The applicant can appeal the decision.

Appeal: the decisions of the Trademark Office may be appealed to the Administrative Conflicts Tribunal.

Granting

Delivery of document: the title of registration is granted between eight and ten months after filing. Since October 2019, the Trademark Office started to issue digital registration titles, which can be viewed at the following link: http://servicios.propiedadintelectual.gob.ec/validador/index.xhtml  

Beginning of protection: from the issuance date of the title of registration. 

Duration: ten years.

Renewal: for periods of ten years.  Grace period: six months.

Working – use: Article 220 of the Intellectual Property Law mandates that the working of a trademark is compulsory. A third party may request the cancellation of a trademark for lack of use during three years from the registration date of the trademark. Correspondingly, the computation of the first non-use period starts with the registration of the trademark. Ecuadorian law does not allow for the ex officio cancellation of a trademark. Consequently, cancellation applications must be brought by third parties. Article 224 of the Intellectual Property Law considers using a trademark that is essentially non-diverging from the registered trademark to be valid working of the registered trademark. Affixing the trademark to the product or its package is also considered working the registered trademark. Exportation and importation of goods marked with the trademark, use at exhibitions/fairs, and trademark renewals are considered valid working of the trademark. Use of the trademark in anyone of the Andean Pact countries constitutes valid working of the trademark in Ecuador. 

Nominal use: (publication and/or advertisement of the trademark in newspapers or periodicals) is not deemed working the registered trademark. Similarly, use of the trademark on invoices or stationery is also not sufficient to constitute working.

Licenses and assignments: trademark or service mark owners may transfer or license their rights to third parties only by means of a written contract. Assignment and transfer of trademarks must be registered at the Trademark Office. Every license agreement must contain a provision assuring the quality of the products or services and be approved at the Trademark Office. The Trademark Office will not register contracts containing clauses that impede free competition.

Rights derived from a Registered Trademark

The following rights are conferred upon the trademark holder after securing registry: (a) to use or apply the trademark as intended by its nature; (b) to prevent third parties from using, registering or appropriating the trademark (or confusingly similar marks or names) without the express consent of the trademark holder; (c) to prevent third parties from applying, selling, promoting, storing or introducing trade products or services using the trademark (or confusingly similar marks or names) without the express consent of the trademark holder; (d) to encumber, license or otherwise dispose of the trademark as the holder sees fit.

Modification of Protection after Granting

Compulsory licenses: do not exist.

Cancellation: trademarks may be cancelled upon the request of the holder when the mark is identical or similar to one that is notorious or well-known before the solicitation of the trademark in question. 

Nullification: can take place either through the administrative or judicial process.

Administrative nullification: can be sought at the Trademark Office, at the request of a third party, or at the Trademark Office’s initiative, upon the presentation of evidence demonstrating that the application process was not correctly followed or that the trademark registration has been issued based on false documents or information presented in the application. An administrative trademark nullification ruling can be appealed twice and this process usually takes between one and two years. 

Judicial nullification: can be sought by third parties in the Ecuadorian civil courts on the same grounds as those in the administrative nullification process. The judicial nullification ruling can be appealed twice and the process frequently takes between two and four years.

Infringement: the following constitute infringement of a registered trademark: (1) imitation of an original mark; (2) sale, or offer to sell, of imitated trademarks; (3) sale, or offer to sell, original marks without consent of the trademark holder; (4) unauthorized use of trademarks on manufactured products, articles or merchandise; (5) sale or resale of merchandise displaying imitated trademarks; (6) use of trademarks containing false indications as to nature, amount, quality or origin or the article or merchandise; (7) application of a registered trademark to an article or merchandise not corresponding to the trademark’s authorization; (8) refilling containers bearing a registered trademark with non-conforming products; (9) sale of refilled containers containing non-conforming products; (10) use of an altered trademark. 

Penalties: infringement is punishable by fines and imprisonment for periods from three months to three years. Additionally, the government can order infringing products to be destroyed.