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Ecuadorian Court Protects the Rights of a Denomination of Origin Approved in Italy and Registered by the European Union and the WIPO

The decision is supported in article 135 of Decision 486 of the Andean Community, which establishes the absolute prohibition of a registration as trademarks of signs that may deceive commercial agents or the public.

By Quevedo & Ponce

Floralp S.A., an Ecuadorian corporation devoted to milk production and cheeses manufacture, during 2015 applied for the registration of the trademark “FLORALP FONTINA MAS DISEÑO”, which was opposed, through the law firm Quevedo & Ponce, by Consorzio Prodduttori e Tutella della DOP FONTINA, as controller of the denomination of origin FONTINA of milk and cheeses produced under certain conditions from certain cows in the area of the Aosta Valley in Italy. The National Service of Intellectual Rights rejected the application on the basis of risk of confusion with the products of such Valley.

Floralp S.A. filed a judicial action before the Administrative Tribunal of the Quito District, in order to try to obtain a declaration of illegality of such ruling arguing that the denomination of origin FONTINA had not been registered in Ecuador and should not be protected.

During the trial hearing, evidence off the declaration and registrations of the denomination of origin FONTINA since 1955 was produced 1969, including the Italian presidential decree of October 30, 1955, the registration No. 503 of June 13, 1969 of FONTINA in the International System of Denominations of Origin of the WIPO, and the Official Bulletin of the European Union of June 21, 1996, containing the registration of FONTINA as a denomination of origin.

On February 5, 2025, the written decision of the Administrative Tribunal of the Judicial District of Quito, was issued rejecting Floralp’s claim on the basis that the eventual use of FONTINA as a trademark would derive in a risk of confusion for the consumers. The decision applied the compulsory criteria established by the Andean Tribunal of Justice, in several prejudicial interpretations of provisions on the matter contained in Decision 486 of the Andean Community. Such criteria were connected with domestic cases in dealing with PISCO and TEQUILA denominations of origin and ALPINA geographical indication, among other conflicts.

This decision is supported in article 135 of Decision 486 of the Andean Community, which establishes the absolute prohibition of a registration as trademarks of signs that "may deceive commercial agents or the public, particularly regarding the geographical origin, nature, manufacturing process, characteristics, qualities, or suitability for use of the products or services in question."

Furthermore, it was determined that, although "FONTINA" had not been declared, at the time the Floralp application was filed, as denomination of origin in Ecuador, the fact that the sign could mislead consumers who would have linked Floralp’s products to the cheeses and milk of the Aosta Valley imply a risk of confusion for the consumers.

Quevedo & Ponce, representing the CONSORZIO PRODUTTORI E TUTELA DELLA DOP FONTINA, reaffirms its commitment to defending intellectual property rights