Ecuador IP Office accepts notarial verification of webpage as valid evidence in Andean opposition

For the first time, the Ecuador IP Office has accepted verification of webpage as valid evidence.
Legislation allows notaries to certify documents taken from a webpage or any other electronic means.
Registration for the mark AQUAVI was denied in Ecuador as the Colombia Trademark Office website showed that the opponent owned the mark ACUAVIT.
For the first time, the Ecuador IP Office has accepted the notarial verification of a webpage as valid evidence in an Andean opposition. Evonik Degussa Gmbh applied to register the mark AQUAVI in International Class 31. Compañía Industrial de Productos Agropecuarios Cipa SA filed an Andean opposition based on its Colombian ACUAVIT registration.

The Andean opposition was admitted because the Colombian Trademark Office’s website verified that the opponent owned the mark ACUAVIT. The authority based its ruling on Article 169 of Ecuadorian Constitution and concluded that the most important requirement was to demonstrate ownership of the mark.

The Ecuadorian authorities went on to deny the registration of AQUAVI.

Andean oppositions:

Andean oppositions are governed by Articles 146 and 147 under Decision 486 of the Andean Community. This provides that the owner of a mark in any one of the Andean Community countries (Colombia, Peru, Bolivia or Ecuador) may file an opposition against an application for a similar or identical mark in any other member countries. For the Andean opposition to be admitted, it must fulfil two requirements – legitimate interest and interest in the market. The first requirement is met by proving the existence of a prior application or registration in an Andean member country. The second refers to the opponent applying for the same mark in the territory it wishes to oppose, in that way demonstrating not only that it wishes to block the registration of a third party’s mark, but also that it has a real intention to use the mark in that country.

Legitimate interest

In order to substantiate the existence of a prior application or registration, the Ecuadorian IP Office had repeatedly held on previous occasions that this requirement must be demonstrated “through the filing of the certificate of registration obtained in the member country of the Andean Community, or the respective application.”

The Ecuadorian IP Office has long maintained that a certificate of registration from the relevant member country is the only way to declare the existence of a legitimate opponent’s interest. The acceptance of the notarial verification of a webpage changes this long-established approach. Under Ecuadorian law, a notary must verify a webpage by authenticating a paper form of an electronic document, in this case, from the information obtained from the webpages of the Colombian Trademark Office.

Decision 486 of the Andean Community does not specifically refer to how a legitimate interest should be substantiated, leaving such details to the individual countries. In this case, it should be highlighted that Ecuadorian legislation allows electronic documents to be used as evidence, conferring on notaries the ability to certify documents taken from a webpage or any other electronic means.

Katherine González H.

Ecuador

IP Attorney

katherine@corralrosales.com

Published on February 20 2019 .

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