IEPI puts opposition procedures on hold

The Ecuador Intellectual Property Institute (IEPI) has put an estimated 200 to 400 opposition procedures on hold while a committee decides whether the 30-day extension period to file an opposition begins with the last day of the regular opposition period or with the formal notification of extension by the Trademark Office (TO).

Article 208 of the Ecuadorian Intellectual Property (IP) Law provides that parties with a legitimate interest may file for an extension of the standard opposition period. Both Article 309 of the Code of Civil Procedure and Article 118(1) of the Judicial -Administrative Statute of the Executive Branch provide that the extension of time begins with the date of the official notification of acceptance.

However, the TO changed its practice earlier this year, counting the last day of the normal opposition period as the first day of the extension period, while practitioners carried on counting the day of formal notification as the start of the extension period. The TO's change of practice seems to have been triggered by changes to the IP law a few years ago, which provide explicitly that the extension period to file an opposition to a patent registration begins on the last day of the regular opposition period. This explicit language was not included in the trademark section of the new law.

Another question under scrutiny is whether the IEPI must determine the legitimacy of the opponent's interest in the case prior to allowing the extension of time.

While the IEPI committee deliberates, opposition procedures that involved a request for extension must wait.

Bruce Horowitz, Paz & Horowitz, Quito