For this edition, we decided to make a compilation of answers to questions that we frequently receive from clients who intend to protect their trademarks in Colombia.
Link to Q. “I have my trademark registered in the US, Mexico, and Perú, and my products are being sold in the Colombian market. Do I need to register the trademark in Colombia? Q. “I have my trademark registered in the US, Mexico, and Perú, and my products are being sold in the Colombian market. Do I need to register the trademark in Colombia?
Yes. Colombia has a registration-based trademark protection system. Therefore, exclusive rights to use and to commence legal actions for infringement against third parties arise solely from registration before the competent agency. No rights arise from the mere use of the trademark in the Colombian market.
For these reasons, in order to protect a trademark a local registration is required.
Link to Q. “We heard that Colombia is a member of the Andean Community. Under the community’s regulations is there some sort of community trademark covering all of the member countries?” Q. “We heard that Colombia is a member of the Andean Community. Under the community’s regulations is there some sort of community trademark covering all of the member countries?”
No. The Andean Community, which is formed by Colombia, Perú, Ecuador, and Bolivia, has a common industrial property regime, which governs substantial and procedural aspects of industrial property protection in the member countries. However, said regulation is incorporated into the legal regimes of each country and is applied and interpreted on a territorial basis, by the competent agency and the judges of each member country.
Therefore, registration of a trademark must be obtained in each country, and the registrations issued by each trademark office are independent.
The following are some advantages arising from owning a registration in any of the member countries of the Andean Community:
- An Andean Opposition may be filed by the owner of a trademark registration in one member country against an application for the same trademark in a different member country. In this case, the registration in any of the Andean Community member countries provides valid grounds for opposing an application in other Andean countries. It is required that the owner of the opposing trademark applies for registration in the country where the opposition is made, with the purpose of showing interest in the relevant market.
- If a trademark registration in a member country is the object of a cancellation action for lack of use, the owner may defend the registration by evidencing sufficient, continuous, and public use of the trademark in any of the countries of the Andean Community.
- In order to file an opposition or cancellation action based on the status of a well-known trademark, it is possible to submit evidence of the required level of recognition of the trademark in any of the Andean Community member countries.
Link to Q. “Is there any advantage to applying for registration of my trademark in Colombia, arising from my prior registration in other countries?” Q. “Is there any advantage to applying for registration of my trademark in Colombia, arising from my prior registration in other countries?”
The applicant of a trademark in any country that is a member of the Paris Convention, may claim priority to register a trademark in Colombia, if the application is filed within the six (6) months following the initial application and provided that the certified copy of the initial application is filed within the nine (9) subsequent months. In this case, the filing date of the Colombian application will be the same date as the initial application.
Also, if the trademark was applied for in a country that is a member of the Madrid System (the “base application”), the applicant may obtain an international registration before the WIPO, under the provisions of the Madrid Protocol, and request the extension of the protection to other countries that are in the system, such as Colombia.
In that case, the WIPO will submit the request for protection to the Colombian Trademark Office as a “Madrid application”, and the filing date for Colombia will be the same filing date as the base application.
We hope that this information provides a useful overview of some basic aspects to bear in mind when expanding your business into the Colombian market, and filing for registration of your trademark portfolio.