Packaging trade dress protectable under unfair competition law

On April 28 2006 the Ecuadorian Intellectual Property Office (IEPI) granted for the first time protection to an unregistered and unregistrable product package trade dress against a confusingly similar package for the same product (Case 459/06). However, it has emerged recently that an appeal decision in the case may not come out for several years.

The former employee of a manufacturer of generic veterinary products started producing and selling a generic product in a container of which the shape, colour combination and general label layout was similar to that of a product manufactured by his former employer. The product was also sold under a somewhat similar denomination. The former employer was in a quandary as his product had no patent or copyright protection, nor did it contain any registered or even registrable trademark or trade name rights, or signage.

Andean Community Decision 486 on a Common Industrial Property Regime does not refer to packaging trade dress as a separately protectable type of sign outside of the unfair competition area; Article 235 of the Ecuadorian IP Law protects only the trade dress of commercial establishments.

In the present case, the former employer sought administrative protection ('tutela administrativa') for his product trade dress. The IEPI recognized that both Article 258 of Decision 486 and Article 285 of the Ecuadorian IP Law protect product trade dress ('aparencias de productos') against unfair competition. Accordingly, the IEPI granted the administrative protection and stopped all sale and distribution of the infringing product from the initial inspection stage onward.

The case is now on appeal but a decision will not come out for several years.

Bruce Horowitz, Paz Horowitz Abogados, Quito