Exclusive rights over a trademark in Colombia arise solely from registration. Therefore, the general rule is that a trademark registered or protected under the legislation of a different country may not be used as valid grounds for opposition against a trademark application in Colombia.
However there are exceptions to this rule, namely, by filing an Andean Opposition; this is an opposition grounded on a trademark registration in another member country of the Andean Community (Perú, Bolivia, and Ecuador), under the applicable rules; or, based on the undertakings arising from international treaties, the possibility to file an opposition based on the protection awarded by the General Interamerican Convention for Trade Mark and Commercial Protection of 1929, known as the Washington Convention.
Under the Washington Convention, to which the United States is a member — as well as nineteen other countries of the American continent — members states must grant protection to trademarks that are protected under the legal framework of the other member states, so that the owner of a trademark registered or protected outside of Colombia may oppose registration, or prevent the use, of a substantially similar sign, which may cause a likelihood of confusion, as set forth in article 7 of the Convention.
Article 7 of the Washington Convention sets forth the legal requirements to claim protection and provides that to make it effective, the owner of the trademark must submit to the legal proceedings and recourses available in the country where the protection is claimed. To this end, the owner of a Trademark registered in the US may file an opposition against a trademark application in Colombia, provided that the requirements are complied with, and that the opposition is filed within thirty (30) days following publication in the Colombian Industrial Property Gazette. An extension of thirty (30) additional days may be applied for when filing the opposition, with the purpose of submitting additional evidence to support the claim.
The Colombian Trademark Office, when reviewing the opposition and the supporting evidence filed in due term, will determine whether the requirements of article 7 of the Washington Convention have been complied with and particularly will determine whether:
(i) The opposing trademark is duly protected under the laws of the contracting member country;
(ii) The trademark applied for registration is substantially identical to the protected trademark, or if likelihood of confusion exists;
(iii) The person who uses the trademark, or who intends to register had knowledge of the existence and use of the protected trademark in the third contracting country where the trademark is protected.
(iv) The opposing trademark has been used and continues to be used in connection with products of the same class.
In order to support the claim of protection under article 7 of the Washington Convention, the opposing party must provide evidence of (i) registration of the trademark in the member country to the Convention, or evidence of use, where rights arise from use in the market; (ii) evidence that the opposing party is the owner of the opposing trademark; (iii) evidence or arguments showing the likelihood of confusion; (iv) evidence showing the current use of the opposing trademark with respect to the same products or services, and (v) evidence that indicates that the applicant had knowledge of the existence of the opposing trademark.
With respect to these requirements, the Colombian Trademark Office has stated that the protection extends to products or services that are in different classes, provided that a competitive connection is found.
The criteria to establish a competitive connection within different classes include whether the products/ services are substitutes, complementary, they are used with the same purpose, or whether it is reasonable for the consumer to conclude that both products have the same origin.
As regards the requirement to prove that the applicant had knowledge of the existence of the opposing trademark, in some cases the Trademark Office has determined that, provided the existence of information on the Internet, regarding the use of the opposing trademark, it is reasonable to conclude that the applicant had knowledge of the existence of the opposing trademark.
If the Trademark Office finds that all of the requirements are met, as duly evidenced by the opposing party, it will issue a first-instance decision whereby the opposition is declared grounded and registration of the trademark is denied. This decision may be appealed by the applicant.
Please note that in order to file an opposition in Colombia, foreign entities must appoint a local attorney-in-fact to act on their behalf before the Trademark Office. No notarization or legalization of the Power of Attorney is required.
Since filing an application based on article 7 of the Washington Convention does not grant any rights to the opposing party, it is advisable to file an application to register the trademark in Colombia with the purpose of securing the exclusive right to use the trademark, and to prevent third parties from using or registering similar or identical trademarks in Colombia.
If your business expansion plans include Colombia, it is advisable to monitor trademark publications with the purpose of identifying trademark applications that are pending in Colombia, which may be similar to your protected signs in other countries. Filing an opposition based on the Washington Convention is a useful tool to protect your trademark protection plans in Colombia.