PIERRE CARDIN is not famous in Ecuador
In SARL de Gestion de Pierre Cardin v Industria Ecuatoriana de Confecciones (Case 03-0455 AC), the Intellectual/Industrial Property and Plant Varieties Committee, a sub-directorate of the Ecuadorian Institute of Intellectual Property (IEPI) has refused the plaintiff's application to cancel a registration for the trade name Pierre Cardin.
SARL de Gestion de Pierre Cardin (SGPC), the owner of the PIERRE CARDIN mark, brought the action in response to its former licensee Industria Ecuatoriana de Confecciones' (IEC) registration of the trade name Pierre Cardin. SGPC argued that IEC had registered the trade name in bad faith as it had failed to request the express consent of the legitimate owner. It submitted evidence to support its claim that included:
- the original registration of the PIERRE CARDIN mark in France in 1959;
- documents showing registrations for the mark in more than 50 countries;
- an affidavit of the sales volume and royalties at the time of registration of the mark in Ecuador;
- examples of advertising using the mark in various international periodicals; and
- a prior decision of the Administrative and Legal Tutelage Office, another sub-directorate of IEPI, in which the office held that (i) the PIERRE CARDIN trademark was famous, and (ii) IEC was guilty of counterfeiting that mark.
Rather surprisingly, the committee refused SGPC's cancellation action. First, it determined that the PIERRE CARDIN mark is not famous in Ecuador. It noted that SGPC had failed to provide either a certificate of well-known trademark status in relation to the mark issued by a foreign government or evidence of the fame of the mark at the time of its registration in Ecuador.
Next, the committee examined a licensing agreement originally executed between SGPC and IEC in 1981 and which was renewed in 1984. Although not presented during the evidentiary stage of the proceedings, as is required under Ecuadorian law, the committee took the contract into consideration and held that it remained in effect. The original contract and the renewal clearly stipulated a termination date and a duration period of three years. Moreover, there had been no further renewals. In spite of this, the committee found that the licensing agreement was a 'successive tract contract' and, therefore, as there had been no explicit rescission, it remained operative.
The committee's conclusions do not stand up to close scrutiny. A 'successive tract contract' is defined as a contract in which one or both parties require repetition of different actions but this type of contract does not imply an indefinite duration. In addition, according to Andean Community legislation in force at the time of execution of the licensing agreement and its renewal, it seems that neither agreement actually became effective. Article 81 of Andean Pact Decision 85 required that all licensing contracts be submitted for approval by the competent national authority. While the members of the committee noted that there was no evidence that such contract had been submitted to the institutional predecessor of IEPI (the Ministry of Industry, Trade, Integration and Fishing), it did not discuss the effect of this failure to meet the registration requirements in its ruling.
SGPC has filed a motion for reconsideration before the committee.
Amani S Harrison, Bustamante & Bustamante, Quito
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