BELLSOUTH registrations signal shift in policy

Although Ecuador's Intellectual Property Law (Article 195) and Andean Community Decision 486 on a Common Intellectual Property Regime (Article 135) explicitly prohibit the registration of generic or descriptive terms as trademarks because they lack distinctiveness, the decision of the Ecuadorian Intellectual Property Institute to register a number of marks submitted by US-based BellSouth Corporation may indicate a change in the way this legislation is interpreted.

BellSouth submitted applications to register a number of service marks, such as BELL SOUTH INTERNET MOVIL, BELLSOUTH INTERNET MOVIL VOZ and BELL SOUTH INTERNET MOVIL VOZ WAP ('movil voz' meaning 'mobile voice'). Consorcio Ecuatoriano de Telecommunicaciones SA (CONECEL) opposed the registrations on the grounds that the marks are composed of generic and descriptive words.

The Intellectual Property Institute rejected the opposition and allowed the registrations. The institute based its decision on an opinion issued by the Tribunal of Justice regarding the mark TUTTI-FRUTTI. The tribunal opined that TUTTI-FRUTTI is composed of words that when joined together provide sufficient distinctiveness as to indicate the origin of the goods to which the mark applies. Thus, ruled the tribunal, the mark was registrable.

In the case at hand, the institute concluded that while 'movil' and 'voz' may be generic and descriptive when looked at in isolation, when joined together with 'BellSouth' the marks become distinctive and therefore may be registered.

Amani S Harrison, Bustamante & Bustamante, Quito