The Ecuadorian Intellectual Property Office has for the first time in Ecuador accepted the notarial verification of a webpage as valid evidence within an Andean opposition.
The company Evonik Degussa Gmbh applied in Ecuador for the registration of the mark AQUAVI in International Class 31. Compañía Industrial de Productos Agropecuarios Cipa S.A. filed an Andean opposition based on its Colombian ACUAVIT registration.
The Andean opposition was admitted, importantly because the verification of the webpage of Colombian Trade Mark Office showed that the opponent was the owner of the mark ACUAVIT. The authority based its ruling on Article 169 of the Constitution of Ecuador, concluding that the most important requirement is to demonstrate ownership of the mark, more than the form in which this is achieved.
The Ecuadorian authorities went on to deny the registration of AQUAVI.
Andean oppositions are legislated for by Articles 146 and 147 of Decision 486 of the Andean Community which provides that the owner of a mark in any one of the Andean Community countries (Colombia, Peru, Bolivia, Ecuador), may file opposition against an application for a similar or identical mark in any other of the member countries.
For the Andean opposition to be admitted, it must fulfill two requirements: 'legitimate interest' and 'interest in the market'. As to the first requirement, this is met by demonstrating the existence of a prior application or registration in one of the Andean member countries. 'Interest in the market' refers to the opponent applying for the same mark in the territory in which it wishes to oppose, in that way demonstrating not just 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.
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."
This standard of the submission of the application or certificate of registration from the relevant member country has long been maintained by the Ecuadorian IP Office as the only parameter to declare the existence of a legitimate interest of an opponent. The acceptance of the notarial verification of a webpage changes this long-established approach.
The verification of webpages is a mechanism provided for by the Ecuadorian legislation, through which a notary certifies the authenticity of the paper form of an electronic document, in this specific case, from the information obtained from the webpages of the Colombian TMO.
It should be added that Decision 486 of the Andean Community does not specifically refer specifically to how legitimate interest should be substantiated, leaving such details as to process to the individual countries. In the case under analysis, it should be highlighted that Ecuadorian legislation provides that electronic documents may be used as evidence, conferring on notaries the ability to certify documents taken from a webpage or any other such electronic means.
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