Administrative Tribunal of Quito Protects the Rights of a Designation Of Origin Registered in the European Union and WIPO

Floralp S.A., an Ecuadorian company dedicated to the production of dairy products, sought registration of the trademark “FLORALP FONTINA & DESIGN.” This request was objected to by the law firm Quevedo & Ponce, representing the Consorzio Produttori e Tutela della DOP FONTINA, a foreign entity that administers the designation of origin “FONTINA” to identify cheeses produced under specific conditions from the milk of certain breeds of cows existing in the Aosta Valley, Italy. The National Service of Intellectual Rights of Ecuador rejected the application due to the risk of confusion with products from this region.

Subsequently, Floralp S.A. filed a legal suit before the District Administrative Litigation Tribunal, seated in the Metropolitan District of Quito, requesting the declaration of illegality of this administrative decision. The company argued that the designation of origin “FONTINA” had not been registered in Ecuador and, therefore, should not be protected.

During the trial, evidence was presented demonstrating the historical recognition and registration of the designation of origin “FONTINA,” including: The Italian Presidential Decree of October 30, 1955; the International System of Designations of Origin Register of WIPO No. 503 of June 13, 1969; and the Official Bulletin of the European Union of June 21, 1996, which confirm the registration of FONTINA as a designation of origin.

On February 5, 2025, the Administrative Litigation Tribunal issued its written decision, rejecting the claim. The judgment was based on the possibility of consumer confusion if FONTINA were used as a trademark. The decision applied the mandatory criteria established by the Court of Justice of the Andean Community in multiple preliminary rulings regarding the provisions contained in Decision 486 of the Andean Community. These interpretations were also applied in national cases related to the designations of origin “PISCO” and “TEQUILA,” as well as the geographical indication “ALPINA,” among others.

This ruling is grounded in Article 135 of Decision 486 of the Andean Community, which prohibits the registration as a trademark of signs that could mislead commercial agents or the public, particularly with respect to geographical origin, nature, manufacturing process, characteristics, quality, or suitability for use of the products or services in question.

Moreover, the Tribunal determined that, although FONTINA had not been declared a designation of origin in Ecuador at the time of Floralp’s application, the fact that its use could mislead consumers, who might associate products under this brand with cheeses and milk from the Aosta Valley, constituted a risk of confusion.

Quevedo & Ponce, representing the Consorzio Produttori e Tutela della DOP FONTINA, reaffirms its commitment to the defense of intellectual property rights.