IP Committee rules on extension period controversy

The Intellectual Property (IP) Committee of the Ecuador IP Institute (IEPI) has ruled in the DENTAL IMPLANT CENTER Case (Case 03-602 RA) that the extension period to file a trademark opposition begins on the date of the formal notification of extension (the following day counting as day one of the extension period) and not the day when the initial period for filing an opposition expires. This will hopefully put an end to a controversy that started last year and led to the IEPI putting up to 400 opposition proceedings on hold (See IEPI puts opposition procedures on hold).

All the statutes applicable to trademark procedures provide that the extension of the standard opposition period begins the day after the formal notification of extension. However, the Trademark Office (TO) changed its practice last year, counting the last day of the normal opposition period as the first day of the extension period, while practitioners carried on counting the start of the extension period from the day of formal notification.

This change of practice seems to have been triggered by some changes to the IP law that 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.

In DENTAL IMPLANT CENTER, however, the IP Committee has confirmed that both Article 208 of the IP Law and 118(1) of the Judicial-Administrative Statute of the Executive Branch require that day one of the extension period begins the day after the extension is officially notified.

Bruce Horowitz, Paz & Horowitz, Quito