Introduction:

Language: Spanish

Capital: Bogota

Area: 1,141,748 km2

Population: 49,210,124 (2017)

Currency: Peso (COP)

Religion: Roman Catholics (70%), protestant (16%)

Geographical situation: In Central America. Colombia shares a border to the northwest with Panama, to the east with Venezuela and Brazil and to the south with Ecuador and Peru. It shares its maritime limits with Costa Rica, Nicaragua, Honduras, Jamaica, Haiti and the Dominican Republic.

 

 

International treaty membership:

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (August 29, 2012)

Trademark Law Treaty (April 13, 2012)

Convention Establishing the World Intellectual Property Organization (May 4, 1980)

 

Legislation:        

Decision No. 486 Establishing the Common Industrial Property Regime.

 

Government Institutions:

Superintendencia de Industria y Comercio Ministerio de Industria, Comercio y Turismo

 

Type of trademark:

The following signs, among others, may constitute marks:

(a) words or word combinations;

(b) images, figures, symbols, graphics, logotypes, monograms, portraits, labels, emblems and shields;

(c) sounds and aromas;

(d) letters and numerals;

(e) a color within an outline, or a color combination;

(f) the shape of the goods, their containers or their packaging;

(g) any combination of the signs or elements specified in the foregoing subparagraphs.

 

Collective, service, certification mark and trade names can also be registered.

 

Ground for refusal :

Absolute ground for refusal:

Those signs may not be registered as marks that:

(a) cannot constitute marks according to the first paragraph of the foregoing Article; (b) lack distinctiveness;

(c) consist solely of the everyday shape of the goods or their packaging, or of shapes or characteristics dictated by the particular nature or function of the product or service concerned;

(d) consist solely of shapes or other elements that afford a functional or technical advantage to the product or service to which they are applied;

(e) consist solely of a sign or statement that may serve in business to describe the quality, quantity, purpose, value, place of origin or time of production of, or to impart other data, characteristics or information concerning, the products or services for which the sign or statement is to be used, including expressions extolling the said goods or services;

(f) consist solely of a sign or statement which is the generic or technical name of the product or service concerned;

(g) consist solely or have become the common or usual designation for the product or service concerned in the everyday language or usage of the country;

(h) consist of a color in isolation, without any demarcation to give it a specific shape; (i) are liable to deceive business circles or the public, in particular as to the source, nature, manufacturing methods, characteristics or qualities of the goods or services concerned, or their suitability for their purpose;

(j) reproduce, imitate or contain a protected appellation of origin for the same or different goods where use of the sign could create a risk of confusion or association with the said appellation, or might constitute misappropriation of its notoriety;

(k) contain a protected appellation of origin for wines and spirits;

(l) consist of a national or foreign geographical indication liable to cause confusion with regard to the goods or services to which it applies;

(m) reproduce or imitate, without the permission of the competent authorities, either as marks or as elements of marks, coats of arms, flags, emblems or official signs and marks denoting control and warranty adopted by States, and any imitation thereof from the heraldic point of view, and also the coats of arms, flags and other emblems, names or abbreviated names of any international organizations;

(n) reproduce or imitate signs denoting conformity with technical standards, except where the registration thereof is applied for by the national body responsible for standards and quality requirements in member countries;

(o) reproduce, imitate or include the denomination of a plant variety protected in a member country or abroad, if the sign is intended for goods or services related to that variety, or where such use would be liable to cause confusion or association with it;

(p) are contrary to law, morality, public policy or proper practice.

 

Relative ground for refusal:

Those signs may not be registered as marks whose use in trade would unduly harm a third-party right, especially where:

(a) they are identical or similar to a mark previously filed for registration or registered by a third party in respect of the same goods or services, or for goods or services regarding which the use of the mark could cause a risk of confusion or association;

(b) they are identical or similar to a protected trade name or a label or business sign, in so far as they might, under the circumstances, create a risk of confusion or association;

(c) they are identical or similar to an advertising slogan filed for registration or registered, in so far as their use might, under the circumstances, create a risk of confusion or association;

(d) they are identical or similar to the distinctive sign of a third party, in so far as their use might, under the circumstances, create a risk of confusion or association where the applicant is or has been a representative or distributor of, or a person expressly authorized by, the owner of the sign protected in the member country or abroad;

(e) they consist of a sign that affects the identity or prestige of profit-making or nonprofit-making legal entities, or natural persons, including especially the forename, surname, signature, title, hypocoristic, pseudonym, likeness, portrait or caricature of a person other than the applicant or identified by the relevant sector of the public as a person other than the applicant, except where the consent of that person or, if he is deceased, that of those declared his heirs is proved;

(f) they consist of a sign that infringes the industrial property rights or copyright of a third party, except where the consent of the latter has been obtained;

(g) they consist of the names of indigenous Afro-American or local communities, or the names, words, letters, characters or signs used to distinguish their goods or services or the manner of their processing, or which constitute an expression of their culture or practice, except where the application is filed by the community itself or with its express consent; and

(h) they constitute a reproduction, imitation, translation, transliteration or transcription of all or part of a well-known distinctive sign the owner of which is a third party, regardless of the goods or services to which the sign is applied, where their use would be liable to create a risk of confusion or association with that third party or with his goods or services, constitute misappropriation of the prestige of the sign or dilution of its distinctive power or commercial or advertising value.

 

 

Application content:

The application for registration of a mark shall be filed with the competent national office, shall relate to a single class of goods or services and shall include the following documents:

(a) the request;

(b) a reproduction of the mark in the case of a word mark featuring graphic elements, shapes or color or a figurative, composite or three-dimensional mark with or without color;

(c) such powers of attorney as may be necessary;

(d) proof of payment of the prescribed fee;

The omission of any of the elements listed shall cause the application to be regarded by the competent national office as not having been accepted for processing, and no filing date shall be assigned to it.

 

Application process:

Formal examination:

The competent national office shall examine, within 15 days following the filing date of the application, whether it meets the requirements of form.

 

Where the application for registration meets the requirements of form specified in this Chapter, the competent national office shall order publication.

Within a period of 30 days following the date of publication, any person having a legitimate interest may file one reasoned opposition with a view to discrediting the registration of the mark. At the request of a party, the competent national office shall grant one further period of 30 days for the submission of evidence in support of the opposition.

Where opposition has been filed, the competent national office shall inform the applicant accordingly so that, within the following 30 days, he may present his own arguments and submit evidence if he sees fit. At the request of a party, the competent national office shall grant once only an additional period of 30 days for the submission of the evidence in support of the response

 

Substantive examination:

On the expiry of the period of opposition, if none have been filed or opposition have been rejected, the office shall proceed to the substantive examination, and decide whether the applied mark is subject or not to ground for refusal.

 

 

Refusal:

Where it emerges from the examination as to form that the application does not meet the requirements referred to in the foregoing paragraph, the competent national office shall inform the applicant accordingly so that he may meet the said requirements within a period of 60 days following the date of notification. If, on the expiry of the period mentioned, the applicant has not complied with the requirements stated, the application shall be considered abandoned, and its place in the order of precedence shall be lost.

Decision of reject a mark application can also be based on ground for refusal, absolute are ex officio, and relative upon opposition.

 

Rights of exploitation and related delay:

The registration of a mark shall have a term of 10 years from the date of grant, which may be renewed for successive 10-year periods. The owner of a registration, or any person having a legitimate interest, shall apply to the competent national office for renewal of the registration within the six months prior to its expiry, plus a six month grace period after the expiry of the protection.

The right to the exclusive use of a mark shall be acquired by registration of the said mark with the competent national office concerned.

 

Registration of a mark shall confer on its owner the right to proceed against any third party who, without his consent, performs any of the following acts:

(a) using or affixing the mark, or an identical or similar distinctive sign on goods for which the mark has been registered, on goods connected with the services for which it has been registered, or on containers, wrappers, packaging or other means of presenting such products;

(b) removing or altering the mark for commercial purposes after it has been applied or affixed to the goods for which the mark has been registered, to the goods connected with the services for which it has been registered or to the containers, wrappers, packaging or other means of presentation of such goods;

(c) manufacturing labels, containers, wrappers, packaging or other materials that reproduce or include the mark, and also marketing or stocking such materials;

(d) using, in business dealings, a sign identical or similar to the mark in relation to any goods or services where such use could cause confusion or a risk of association with the owner of the registration. Where an identical sign is used for identical goods or services, it shall be presumed that there is a risk of confusion;

(e) using a sign in business dealings that is identical or similar to a mark well known for any goods or services where such use could cause the owner of the registration undue economic or commercial harm owing to the dilution of the distinctiveness or market or advertising value of the mark, or owing to unfair exploitation of the prestige of the mark or its owner;

(f) making public use of a sign identical or similar to a well-known mark, even for noncommercial purposes, where such use could cause dilution of the distinctiveness or market or advertising value of the mark or unfair exploitation of its prestige.

 

However, the registration of the mark shall not confer on its owner the right to prohibit a third party from using the mark to publicize, including the use of comparative advertising, to offer for sale or to advertise the existence or availability of lawfully marked goods or services, or to advertise the compatibility or suitability of spare parts or accessories that may be used with goods bearing the registered mark, provided that such use is made in good faith, is confined to the purpose of informing the public and is not liable to mislead or confuse as to the corporate origin of goods or services concerned.

 

Transfer and conditions:

A granted or pending registration of a mark may be transferred by inter vivos transaction or by succession, with or without the business to which it belongs. Any transfer of the registration of a mark shall be registered with the competent national office. Failure to register shall cause the transfer to be unenforceable against third parties. For the purposes of registration, the transfer shall be evidenced in writing. Any interested party may apply for registration of a transfer. The competent national office may however refuse such registration where the transfer carries a risk of confusion.

 

Withdrawal and cancellation:

The competent national office shall cancel the registration of a mark at the request of any interested party when, without justification, the mark has not be used in at least one of the member countries, by the owner or his licensee or any other person authorized for the purpose during the three consecutive years preceding the date on which the cancellation action was initiated. Cancellation of a registration for non-use of the mark may also be claimed as a means of defense in an opposition action brought on the basis of the unused mark.

The competent national office shall, either ex officio or at the request of any party, order the cancellation of the registration of a mark or the limitation of its scope where its owner has caused or allowed it to become an everyday or generic sign to identify or designate one or more of the goods or services for which it was registered.

The owner of the registration of a mark may at any time renounce his rights in the registration.

The competent national authority may, either ex officio or at the request of any party at any time, declare the absolute invalidity of the registration of a mark where it has been granted in breach of the ground for refusal’s provision. The invalidity of the protection can also be pronounced if the mark was registered in bad faith.

 

Customs protection:

The owner of rights protected under this Decision may bring an action before the competent national authority against any person who infringes his rights. He may also proceed against any person who engages in acts that indicate the imminence of an infringement.

 

The plaintiff or the party reporting the offense may apply to the competent national authority to have one or more of the following measures ordered, among others:

(a) the cessation of the acts constituting the infringement;

(b) indemnification for damages or prejudice;

(c) withdrawal from commercial channels of the goods resulting from the infringement, including containers, packaging, labels, printed matter or advertising or other material, and also the material and means that mainly served for the commission of the infringement;

(d) prohibition of the import or export of the goods, materials or means referred to in the foregoing subparagraph;

(e) the award of ownership of the goods, materials or means referred to in subparagraph

(c), in which case the value of the property shall be set against the amount of the indemnification for damages and prejudice;

(f) the adoption of the necessary measures to ensure that the infringement does not continue or recur, including destruction of the goods, materials

(g) or the temporary or permanent closure of the establishment of the defendant or accused;

(h) publication of the sentence handed down against the infringer and notification thereof, at the latter’s expense, to all interested parties.

 

Sources:

 

Wipo.int: Decision No. 486 Establishing the Common Industrial Property Regime.

 

Vincent Lagier

 

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