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Latin America IPR SME Helpdesk IP Factsheet: Ecuador

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Disclaimer:The Latin America IPR SME Helpdesk is a free service which provides practical, objective and factual information aimed to help European SMEs understand business tools for developing IPR value and managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. The content and opinions expressed are those of the authors and do not necessarily represent the views of the European Commission and/or the Executive Agency for Small and Medium-sized Enterprises or any other body of the European Union. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice. Neither the European Commission nor the Agency may be held responsible for the use which may be made of the information contained therein.

© 2016 - Latin America IPR SME Helpdesk - A project funded by the European Union´s COSME Programme (2014-2020).

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MANAGE YOUR INTELLECTUAL PROPERTY IN LATIN AMERICA

ABOUT LATIN AMERICA IPR SME HELPDESK:The Latin America IPR SME Helpdesk offers free of charge, first-line support on IP and IP rights matters to facilitate the expansion of European SMEs (EU SMEs and SMEs from the Associated countries) already established at, or working with entities in Latin America as well as those potentially interested in establishing commercial and R&D activities and ventures in these countries.

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Last Update February 2016

GDP in 2014: €75.8 billion (Source: IMF)Annual Growth Rate in 2014: 3.8% (Source: World Bank) EU exports of goods to Ecuador (2014): €2.2 billion (Source: Eurostat)EU imports of goods from Ecuador (2014): €2.6 billion (Source: Eurostat)Total trade in goods €4.8 billion (Source DG Trade)

B. Key INDUSTRY SECTORS:

The Ecuadorian economy is heavily dependent on exports. Petroleum accounts for 40% of total exports followed by agricultural products.

The main exports from the agro-food sector are: bananas, shrimps, cacao and its derivatives, tuna and white fish, coffee and its derivatives, followed by non-traditional products including fresh flowers, mineral products, wood, fruits and tobacco leaves. The range of agricultural products exported has been expanded in recent years to include grapes, asparagus or mangoes. Ecuador is the world’s sixth largest flower exporter.

Ecuador’s major imports are industrial materials, fuels and lubricants, and perishable goods. In the last couple of years, imports have experienced moderate growth. The EU is the main market for Ecuador's non-oil exports.

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THE BUSINESS FACTS IN ECUADOR FOR EU COMPANIES

A. SIZE of the MarketB. Key INDUSTRY SECTORS

IPR in Ecuador for SMEs: BACKGROUND

A. Intellectual Property Rights for SMEs: Why is this relevant to you?B. How does the Ecuador IP legal framework compare to INTERNATIONAL STANDARDS?

IP Rights in Ecuador: THE BASICS

A. Copyright and related rightsB. Patents C. Industrial Designs D. TrademarksE. Geographical Indications (GI)

ENFORCING your IPRs

Using CUSTOMS to Block Counterfeits

RELATED LINKS and Additional Information

GLOSSARY

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1. THE BUSINESS FACTS IN ECUADOR FOR EU COMPANIES

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A. SIZE of the Market:

Although Intellectual Property legislation enjoys a certain degree of international harmonization, Ecuador has some differences with EU Legislation. This Factsheet is aimed to explain such differences concerning Copyright, Patents, Industrial Designs, Trademarks, Tradenames, Geographical Indications and Appellations of Origin.

B. How does the Ecuador IP legal framework compare to INTERNATIONAL STANDARDS?

Ecuador is a member of the Andean Community (CAN), whose current members are Bolivia, Colombia, Ecuador and Peru. CAN’s scope includes areas such as customs, democracy, education, the environment, energy, investment, trade, and Intellectual Property.

Ecuador’s IP framework consists of:

• Andean Community regulat ions known as Decis ions(Decisiones) which are also recognised in the National Constitution and which take precedence and are applied before other laws

• Treaties,agreementsandconventionsratifiedbythecountry• Nationallaws

The main IPR-related Decisions in the Andean Community are: Decision No. 391 Establishing the Common Regime on Access to Genetic Resources, Decision No. 351—Common Provisions on Copyright and Neighbouring Rights and Decision 486—Common Provisions on Industrial Property.

The institution in charge of IP matters in Ecuador is the Ecuadorian Institute of Intellectual Property (IEPI).

The main national IP law is the Intellectual Property Law (Codification No. 2006 13), which encompasses a number of international treaties ratified by Ecuador such as:

• AgreementonTrade-RelatedAspectsof IntellectualPropertyRights (TRIPS) (more information here)

• BerneConvention(moreinformationhere)• ParisConventionfortheProtectionofIndustrialProperty(more

information here)• PatentCooperationTreaty(PCT)(moreinformationhere)• PhonogramsConvention(moreinformationhere) • RomeConvention(moreinformationhere)• InternationalConventionfortheProtectionofNewVarietiesof

Plants(UPOV-1978act)(moreinformationhere)• World IntellectualPropertyOrganization (WIPO)Convention

(more information here)• WIPOCopyrightTreaty(WCT)(moreinformationhere)• WIPOPerformancesandPhonogramsTreaty (WPPT) (more

information here)

LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: ECUADOR1

The EU exported almost 2.2 billion euros to Ecuador in 2014 (source DG Trade). The top three exporters were Spain, Germany and the Netherlands. Machinery equipment, mineral fuels and related equipment and chemicals account for more than 70% EU exports to Ecuador

2. IPR in Ecuador for SMEs: BACKGROUND

A. Intellectual Property Rights for SMEs: Why is this relevant to you?

Intellectual Property (IP) refers to any creation, invention or sign, which can be used in commerce capable of generating profits for its creator, inventor or holder. Hence, it must be considered as part of the intangible assets in a company. IP is usually divided into two branches, namely Industrial Property, which relates to inventions, designs or signs used in commerce; and Copyright (or ‘author’s right’, according to non-English definitions), which relates to literary, scientific and artistic works.

Intellectual Property Rights (IPR) are exclusive rights granted by a national authority or by law that allow right holders to prohibit all unauthorised use or exploitation of their creations, inventions or signs by third parties. IPRs are exclusive, territorial and temporary and its term and scopes differs depending on the type of IPR as well as on the country.

The importance of IPRs therefore lies in the possibility to generate assets for companies based on exploitation of the exclusive right granted and its protection against unfair competitive practices. The creation and protection of most IPRs, namely Copyrights, Trademarks or Industrial Designs, does not require significant capital investment in comparison to the potential advantages, whereas development and protection of inventions (Patents) tends to be more expensive. In both cases, SMEs are able to benefit from the right protection, management and exploitation of their IP Rights by enabling them to:

• Differentiatefromcompetitors• Constituteastrongbasistobuildagoodwillinthemarket• Generationof incomethroughotherbusinessmodelssuchas

licensing or franchising• Protectitsintangibleassetsthatcouldbeevenmoreimportant

than tangible assets (e.g Coca Cola, Apple, Google)• Prevent third parties fromusing their names, inventions,

creative works…

PUBLIC PROCUREMENT

Public projects select their suppliers of goods and services through public tenders, which are published in the main national newspapers: ‘El Comercio’ and ‘El Universo’.

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The EU is present in the Andean Community with a delegation in Quito, Ecuador. In June 2012, the EU signed a Trade Agreement with Colombia and Peru, which includes specific provisions on IPRs. Although negotiations for the accession of Ecuador were concluded in July 2014, the Agreement has not been approved yet.

The European Commission has reported certain deficiencies on IPR Protection in Ecuador in its Report on the protection and enforcement of intellectual property rights in third countries, namely:

• Increaseinregistrationfees• ReductioninthelengthandscopeofpharmaceuticalPatents• Deficient(evenlackof)criminalsanctionsforIPRinfringements• Inadequateproceedings for testdataandauthorization for

commercialization of pharmaceutical products• Availabilityof counterfeitedproducts inpublic spacesand

markets, such as La Bahía market in Guayaquil.

In turn, the United States, in its 301 Special Report (2016 edition), has transferred Ecuador from its Priority Watch List to its Watch List, as a result of the reinstatement and improvement of Criminal penalties against IPR Infringement, on the negative side, the US administration considers that enforcement against counterfeiting and piracy remains weak in Ecuador. Moreover, the report casts doubts as to whether the new Intellectual Property Law “Código Ingenios” fulfil all the obligations derived from International Treaties.

3. IP Rights in Ecuador: THE BASICS

A. Copyright and related rights

What are Copyright and Related Rights?

Copyright protects original intellectual creations of literary, artistic or scientific nature (“works”). Some examples of works that can be protected by Copyright are: books, documents, websites, drawings, software or scientific papers.

Related rights protect the right of those persons that – without being authors- somehow contribute to the creation, embodiment or communication of the work. Some examples are the musician that plays in a concert, an actor or the editor of a book.

As in Europe, Copyrights in Ecuador are split into two groups of rights:

• Economic rights, derived from the property of a copyrighted

work, grant the author (or owner) the right to prevent third parties from: communicating to the public, reproducing, distributing and transforming the work. Economic rights can be transferred or licensed in order to allow third parties to exploit the work.

• Moral rights are personal rights of the author that cannot be transferred and include mainly the right to be recognized as author, the right to decide to publish the work and the right to the integrity of the work. These rights are inalienable and non-transferrable.

Copyright in Ecuador: What you need to know

In order to grant the exclusive right, Ecuadorian legislation requires the work to be original. The law does not protect mere ideas but the way they are expressed, described, explained or otherwise embodied. In the same way as in Europe, you can join a Collecting Society to defend your economic rights. The IEPI’s National Directorate of Copyright and Related Rights is empowered to approve the articles of association of these societies and to control and regulate them.Some of the current existing collecting societies in Ecuador are:

• SAYCE (authors and composers of musical works) -- part of the International Confederation of Authors’ and Composers’ Societies (CISAC)

• SOPROFON (phonogram producers) • EGEDA Ecuador (audio-visual producers)• SARIME (musical and audio-visual performers). SARIME

has signed an agreement with the AIE (Spanish collective management society of Artists and Performers). Ecuadorians members are represented in all countries where the AIE operates

INTERNATIONAL TRADEMARK REGISTRATIONS

Ecuador is not a member of the Madrid Protocol. Therefore, if your company is interested in applying for a Trademark in Ecuador, it will not be able to extend its international registration. In these cases a national IPR registration will be needed.

DERIVATIVE WORKS

Derivative works are works that modify prior protected works (the original work). Examples of this are translations, film adaptations of novels, or versions of songs.

Should you want to translate/adapt a work you need prior authorization from the right holder of the original work to exploit such derivative work.

HOW LONG does legal protection last?

The exclusive right granted by Copyright starts from the moment of the creation and lasts during the author’s lifetime plus seventy (70) years after his death. If the owner is a legal person, the term is seventy (70) years from the creation, disclosure or publication of the work.

Once this time expires, works will enter the public domain and may be exploited by any person, provided that the relevant moral rights are respected.

HOW do I register?

Registration is not mandatory; your Copyright or related work will be protected from its creation, without the need of registration, deposit or compliance with any formalities. Nevertheless, registration may very useful in enforcement actions as a proof of ownership, and of the date of creation or the content of the work itself (e.g. the protected source code).

In Ecuador, works can be registered at the IEPI’s Directorate of Copyright and Related Rights. The requirements are:

a) Fill out the registration form (in Spanish). There are different forms for different types of work: literary, art, music, computer software, etc.

b) Copy of the author’s ID cardc) Pay the required feed) Submit a copy of the work (number of copies and format may

vary depending on the kind of work)

Registration can be done online or in person at the IEPI offices.

WHO can register?

Any natural person who is the author/owner of the work or any legal person holding the rights can apply for registration, either personally or duly represented. A lawyer is recommended but not mandatory.

According to Ecuadorian legislation only natural persons can be authors of a work. Conversely, legal persons only could own certain rights over the works, namely economic rights.

HOW much does it cost?

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COPYRIGHT OWNERSHIP

The first owner of a work is generally the person who creates it. Therefore, the person whose name pseudonym, initials, abbreviated name or any other sign that allows identifying him appears on the work, benefits from presumption of authorship.

However, if a work is created under an employment relationship, the employer is deemed the first owner and shall be authorized to exploit the work.

Fees Cost

Registration of literary works (unpublished and published)

€11

Registration of databases €18

Registration of artistic works (paintings, photographs, sculpture, maps, engravings, etc.) and musical works (score, lyrics including the title of the song and the rhythm)

€11

Phonogram record or recording of musical works or other sounds

€11

Registration of software or computer program

€18

Registration periodicals radio programs

€11

Registration of audio-visual productions (film, video recordings, television shows and related productions)

€11

There are some inventions that, although they fulfil the criteria for patentability, cannot be registered because its "Subject matter" (i.e. the content of the invention) is excluded from patentability. In Ecuador the following inventions cannot be patented:

• Inventionswhosecommercialexploitationareprohibitedforbeing against law, public order or morality

• Methodsoftreatmentofthehumanoranimalbody• Plantoranimalvarieties.• Sculptures,architecturalworks,paintings,engravings,patterns

or any other object of a purely aesthetic nature.

You should bear in mind that second use Patents (see Glossary) are not allowed either under the Andean Community legislation.

HOW LONG does legal protection last?

Patent protection lasts twenty (20) years from the application (or priority) date. The Utility Model’s term is ten (10) years counted from the application date. It takes around nine (9) years to get the Patent and slightly less, six (6) to seven (7) years to be granted a Utility Model.

HOW do I Register?

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B. Patents and Utility Models

A Patent is a set of exclusive rights granted by the state to an inventor or his assignee; it is a monopoly over products or processes. Patents are territorial rights; therefore it is necessary to apply for registration on a country-by-country basis. Ecuadorian legislation provides for two different types of protection for inventions:

• Patents: to protect inventions that consist in technical solutions to an existing problem (e.g. a process that allow to joint two molecules that improve a pharmaceutical product). The innovation may somehow benefit mankind, animals, plants or the environment.

• Utility Models: to protect minor or incremental inventions. The Utility Model is a new improvement of an already known invention that provides an extra functionality. It provides some utility, advantage or technical effect that it did not have before. UM may also protect any other new creation that does not imply a great inventiveness degree.

Patents in ECUADOR: What you need to know

In order to have access to the Patent protection the invention must fulfil the following three (3) requirements: be new (novelty); be inventive (inventive step); and be capable of industrial application.

Novelty: An invention shall be considered new when it is not included in the prior art. Prior art includes everything that has been made available to the public by written or oral description, by use or by any other means, prior to the filing date of the Patent application or, where appropriate, the recognized priority date.

Inventive step: An invention is regarded as involving an inventive step if it would not have been obvious, or obviously derived from prior art, to a person skilled in the technical field concerned.

Industrial applicability: The invention must be capable of being applied in industry; in other words, the invention shall be produced or used in any type of industry involving any productive activity, including services.

Novelty is the only requirement to obtain protection for Utility Models in Ecuador.

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FORMAL REQUIREMENTS

It is very important to ensure that the Patent application is sufficiently clear and complete to be understood. It must disclose the invention in such a way that it could be performed by the person skilled in the art. A Patent application must refer to one invention only or to a group of inventions that form a single inventive concept. Therefore if you have more than one invention do not try to include all within the same application but in different ones. It will prevent you to incur in delays due to formal deficiencies.

PRELIMINARY SEARCH

Conduct a Prior Search on the State of the Art in order to assess if your Patent is new and inventive. You can ask an IP to do this for you and/or conduct your own (preliminary) Prior Search, with the support of our Factsheet How to conduct a Patent Search and our Helpline service.

It is also advisable to seek guidance from the Patent Examiners Unit about the process, the documents needed and basic Patent application requirements.

1. Application

Patent applications are filed at the IEPI National Directorate of Industrial Property. The application and documents must be submitted in Spanish or duly translated. The application must contain:

a) Applicant’s ID. If it is a legal person, it shall be identified by its name and the place of incorporation

b) Identification of the inventorc) If the applicant is not the inventor, evidence of rights over the

invention (i.e. transfer or assignment of the right)d) Name and address of the applicant’s legal representative, if

necessarye) Name of the inventionf) Abstract (no more than 150 words) g) Description and claimsh) Drawingsi) Authorization to use the traditional knowledge of indigenous,

African American, or local communities if the invention was obtained or developed from such Knowledge, if necessary

j) Deposit of biological material, if necessaryk) Payment of the feesl) Copy of any Patent application filed abroad if priority is

claimed

2. Formal examination

The National Directorate of Industrial Property will examine the application within fifteen (15) days of the filing and it will determine if the formal requirements are complied with.

3. Publication and oppositions

Within eighteen (18) months of the filing date (or priority date, if claimed), the application will be published, starting a thirty (30) day period when third parties can object the application. Third parties can request a thirty (30) day extension to examine the abstract and claims of the application.

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Oppositions are mainly based on lack of patentability of the invention or on lack of the applicant´s right to apply for the Patent. Those that file reckless oppositions (i.e. without legal grounds) are liable for the damages caused.

4. Examination request

Within six (6) months of the date of publication of the application (regardless of oppositions), the applicant must request the examination of the patentability of the invention. Failing to comply with this request will lead to the withdrawal of the application.

5. Substantive examination and final decision

The National Directorate of Industrial Property will conduct the substantive examination on the invention´s patentability.

If the final examination is favourable, the patent will be granted. If it is partially unfavourable, a Patent will be granted over the accepted claims (see Glossary). Finally, if the result of the examination is entirely unfavourable, the patent will be rejected, by means of a reasoned decision.

WHO can register?

Any natural or legal person may apply for the registration at the IEPI. If the applicant is not the inventor, he/she must prove his right over the invention. There is no need to hire an Intellectual Property Attorney for representation.

HOW much does it cost?

Fees Cost

Patent application fee €2,583

Request for Patent examination (patentability)

€1,385

Request for national Patent data search

€55

Patent modification €208

Utility Model application fee €125

Request for utility model examination (patentability)

€180

Request for utility model national data search

€42

Utility model modification €95

Opposition fee €229

C. Industrial Designs

Industrial Designs protect the external appearance of the whole or part of a product. The protection is granted to any combination of lines, shapes or colours or any two-dimensional or three-dimensional shape, whether or not combined with lines or colours, that may serve as a pattern for the industrial or handcrafted manufacture of a given product.

The Design protection does not extend to technical or functional features.

The only requirement is novelty. An industrial design is not deemed new when, before the application date, it has been made available to the public by means of a description, use or by any other mean.

HOW LONG does legal protection last?

The exclusive right lasts ten (10) years from the filing date of the application. The average granting period does not usually exceed twelve (12) months if there are no oppositions.

HOW do I Register?

In order to obtain the filing date, the application must contain:

a) The requestb) Applicant’s identificationc) Identification of the representative and Power of Attorney, if

necessaryd) Proof of assignment of the right, if the applicant is not the

creatore) Description of the Designf) Graphic representation of the Designg) Priority document, if claimedh) Classification of the Design, according to the Locarno

Classificationi) Proof of payment of the fees The proceedings are the same as for Patents (see above). However, the substantive examination of the novelty will only be performed if there are oppositions. Otherwise the Design will be granted without any substantive examination.

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WHO can register?

Any natural or legal person may apply for the registration at the IEPI. If the applicant is not the creator, he must prove his or her right over the invention. There is no need to hire an Intellectual Property Attorney for representation.

HOW much does it cost?

Fees Cost

Industrial Design application fee €125

Request for national industrial design data search

€33

Modification €55

Opposition fee €230

D. Trademarks

WHAT is a Trademark?

A Trademark is a sign capable of distinguishing goods or services from others coming from other business origin. It may contain words, numbers, slogans, three-dimensional shapes, logos, sounds, smells, textures, colours, combination of colours, or any combination of the former.

LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: ECUADOR

COLOUR TRADEMARKS

Unlike in many EU countries, colours per se cannot be registered in Ecuador. In order to register your colour as a Trademark, you must outline or delimit it by a specific shape.

Trademarks in ECUADOR: What you need to know?

Apart from goods and services Trademarks, Ecuador provides for two additional types of Trademarks:

Certification Trademark: sign that certifies the common characteristics, usually the quality, components and origin of the products or services produced or distributed by authorized persons (e.g. WiFi).

Collective Trademark: sign that serves to distinguish the origin or any other common characteristic of goods or services from different firms that use the mark under an association’s control (e.g. a producers association trademark).

Unlike in Europe, Andean legislation on Trademarks (Decision 486) st i l l requires the sign to be capable of graphical representation before it can be protected.

The Andean legislation provides for two types of grounds of refusal (i.e. the signs that cannot be registered):

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Absolute grounds for refusal are referred to the Trademark itself, your Trademark will not be accepted if, for example:

• It cannot be graphically represented • Lacks distinctiveness (i.e. it describes the characteristics, or

quality, or quantity of the product or service, it is a common or usual name for the product or service concerned, etc.).

• Consists of the name of indigenous, African American, or local communities, or any signs which are used to distinguish their products, services or methods of processing, or that constitute an expression of their culture or practice, unless filed by the community itself or with its express consent

• It is contrary to law, morality or public order• It contains shapes that provide a technical advantage of

functionality• It imitates or reproduces flags, emblems or any other sign

from a State

Relative grounds for refusal are referred to the conflict with earlier rights, such as:

• Ecuador prior Trademarks• Prior Trademarks from any of the Andean Community

members• Well-known Trademarks• Other prior IPRs (e.g. Copyright, Geographical Indication)

If you want to know more about these or other grounds of refusal, and get advice tailored to your specific case, contact our Helpline. It is free, fast and confidential.

CAN TRADEMARKS

Although the Andean Community does not provide for a unitary Trademark, as in the European Union, If you are the owner in at least one CAN Member State may you can oppose (see Glossary) to any similar/identical Trademark application in any of the other Member States, subject to:

1) You proof that there is a legitimate interest in that country

2) You apply for the prior Trademark in the second Member State

OTHER DISTINCTIVE SIGNS

Additionally, there are two types of distinctive signs you may be interested in if you intend to operate in Ecuador: trade names and slogans. Trade Names are used for distinguish businesses/activities whereas Slogans are phrases used on advertising that are closely linked to a Trademark (e.g. Have a break, have a Kit Kat).

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HOW LONG does legal protection last?

The exclusive right granted for Trademarks lasts ten (10) years from the registration date, renewable for subsequent ten-year periods. The renewal of the Trademark can be filed six (6) months before the expiration date and until six (6) months after the referred date. The average granting period is usually around ten (10) months if there are no oppositions.

HOW do I Register?

1. Prior to registration

Prior to the submission of an application it is advisable to conduct a background search to verify that the Trademark you intend to apply for will not conflict with any prior Trademark. Unfortunately, there is no public Trademark database in Ecuador; you must request it from the IEPI (approximate cost = €15).

2. Application

National legislation does not allow applicants to file a multiclass application for a single Trademark. Therefore, a separate Trademark application must be filed for each class of products or services for which the Trademark protection is requested

For the classification of the goods and services IEPI uses the International Classification of Goods and Services established by the Nice Agreement. To check whether products or services fall within the same class, please contact our Helpline service.

The application can be done online or in person at IEPI’s offices, an application must contain:

a) Application formb) Identification of the applicant (natural or legal person)c) Sign for which registration is sought, or a reproduction of the

Trademark with any special graphic elements, shape or colour, or a figurative, composite or three-dimensional mark with or without colour

d) List of the goods and/or services

e) Priority documents, if claimedf) Power of Attorney, if necessaryg) Proof of payment of the fees

3. Formal examination and publication

The IEPI will conduct a formal examination after which the application will be published in Ecuador’s Industrial Property Gazette. If the examiner notices any deficiencies, a thirty (30) day period will begin during which the application can be amended, otherwise it will be rejected.

4. Oppositions

After publication, third parties have thirty (30) days within which to oppose the application on any grounds for refusal (see above “What you need to know”). Those that file reckless oppositions (i.e. without legal grounds) are liable for the damages caused.

5. Substantive examination and final decision

Regardless of whether oppositions are filed or not, IEPI will conduct a substantive examination (taking into account both absolute and relative grounds for refusal) and decide to reject or accept the trademark and subsequently, issue a registration certificate.

WHO can register?

Any natural or legal person, whether national or foreign, may apply for a Trademark. There is no need to hire an Intellectual Property Attorney

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USE OF THE TRADEMARK

In Ecuador there is no requirement to prove use of the Trademark in order to renew it.

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HOW much does it cost?

E. Geographical Indications (GI)

There are two different types of GIs in Ecuador: Appellations of Origin and Indications of Source. National IP law does not differentiate between agricultural and non-agricultural products.

An Appellation of Origin (AO) is the name of a particular country, region or place or a name, which is used to identify a product originating therein when its quality, reputation or other characteristics are exclusively or essentially due to the geographical environment in which it is produced, including both natural and human factors.

An Indication of Source is a name, expression, image or sign that designates or evokes a particular country, region, locality or place.Foreign Appellations of Origin must have been previously recognized as such in their country of origin. The application can be filed by its producers, extractors, manufacturers or craftsmen who have a legitimate interest, or by the public authorities of that member country.

There is no time limit for the duration of Appellations of Origin, which will remain valid as long as the grounds for their registration persist.

The process of recognition of a foreign Appellation of Origin is €37. Nevertheless, Resolution No. 004-2015 CD-IEPI provides a 100% exemption to Ecuadorian products until 31 December 2017. Furthermore, in practice, the IEPI reports that the exemption is fully applicable to all Appellations of Origin.

4. ENFORCING your IPRs

In case of infringement, Ecuadorian law entitles the IPR owner to bring civil, criminal and administrative actions.

Anyone affected by an existing or potential infringement of IPRs may request the IEPI to inspect the allegedly infringing goods, request information from the alleged infringer and even to sanction him. If there is a presumption of an infringement, IEPI sends a copy of the file to the competent criminal judge and to the public prosecutor.

The IPR holder may also bring civil proceedings to request compensation for damages incurred due to the infringement. At the same time, he/she may request that the public prosecutor initiate a criminal investigation to sanction the offender.

In the event of online infringements, the IPR holder can request to a tribunal to order the Internet service provider to block the web page or to take down the work that is deemed to be illegal.

5. Using CUSTOMS to Block Counterfeits

IPR holders and customs authorities are entitled to prevent the entry of counterfeits. Ecuador is member of the World Customs Organization (WCO). Control measures are under the control of the Ecuadorian National Customs Services (SENAE).

An IPR holder can request SENAE to suspend custom clearance when there are reasonable grounds to suspect that the imported or exported goods are of counterfeits. Additionally, national legislation empowers the customs authorities to suspend ex officio (i.e. without the need of IPR holder’s request).

Ex officio: SENAE will block the entry and/or exit of the goods and notify the IEPI director who, within 5 days, shall reject or confirm the decision.

9

Fees Cost

Trademark application fee €191

Collective mark or certification mark application fee

€367

3D marks application fee €919

Request for search €15

Special search report based on any of the following criteria: holder, international-class, year of registration, and pending applications in a given period

€1.83 each

Modification €93

Application for recognition of a well-known mark

€3,000 - €9,900

Trademark registration or grant fee €367

Renewal fee €191

10LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: ECUADOR

By request: the IPR holder is entitled to:

• Request that SENAE suspend the goods’ clearance. Adecision must be issued within 3 days. If the request is rejected, the IPR holder may file a request with the IEPI Director.

• FilearequestforsuspensiondirectlywiththeIEPIDirectorwho must issue a decision within 3 days.

In both cases, IEPI may require a guarantee from the IPR holder. The alleged infringer may also request the lift of the suspension, which will lead to a hearing where the infringement evidence will be analysed.

IPR holders may also request seizure of the imported/exported products as a Preliminary Injunction before Courts.

6. RELATED LINKS and Additional Information

For more relevant information, see the following websites:

EU Delegation in Ecuador http://eeas.europa.eu/delegations/ecuador/index_es.htm

The Ecuadorian Intellectual Property Institute (IEPI) http://www.propiedadintelectual.gob.ec/

Ministry of Industry and Productivity http://www.industrias.gob.ec/

National Customs Services http://www.aduana.gob.ec/index.action

The National Institute of Statistics and Census http://www.ecuadorencifras.gob.ec/

Coordinating Ministry of Production, Employment and Competitiveness http://www.produccion.gob.ec/

Republic of opportunities Ecuador http://inversion.produccion.gob.ec/

Decision 486 http://www.wipo.int/wipolex/en/text.jsp?file_id=223717

Law on Intellectual Property http://www.wipo.int/wipolex/en/text.jsp?file_id=126450

7. GLOSSARY

Opposition: An action that a third party brings before a national office in order to ask for the refusal of a certain application.

Second use: Refers to the possibility of patenting a different use of an already known object/product (e.g. Use of a chemical composition as a medicine to treat heart diseases when the original patent claims its use as an antibiotic). In general, in Europe it is possible to patent such second use subject to the fulfilment of the novelty and Inventive step requirements.

Claim: Part of a patent application or specification that defines the matter for which protection is sought in terms of technical features.

Priority date: The Paris Convention (PC) establishes priority rights for all the patents and designs that have been applied for in any of the PC members (all EU countries are members). Such priority lasts twelve (12) months from publication (Patents and Utility Models) and six (6) months (Industrial Designs)

In such cases, the application date in the country of origin will be the priority date. The priority date is very important for patents, utility models and designs, since it will be the date taken to assess the state of the art and evaluate the novelty and inventiveness of the application.

As per Trademarks Paris Convention establishes a six (6) month priority period for all Trademarks that:

• Have been applied for in any of the members (all EU countries are members)

• Have been used in an officially recognized international exhibition

In such cases, the application date in the country of origin or the exhibition date will be the priority date. The holder will be entitled to oppose third parties’ applications filed after the priority date

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Latin America IPR SME Helpdesk IP Factsheet: Ecuador

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Disclaimer:The Latin America IPR SME Helpdesk is a free service which provides practical, objective and factual information aimed to help European SMEs understand business tools for developing IPR value and managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. The content and opinions expressed are those of the authors and do not necessarily represent the views of the European Commission and/or the Executive Agency for Small and Medium-sized Enterprises or any other body of the European Union. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice. Neither the European Commission nor the Agency may be held responsible for the use which may be made of the information contained therein.

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Last Update February 2016