Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark infringement is a crime if it is committed with intent. Victims may file a criminal notice before the General Prosecutor’s Office or request the assistance of the judicial or customs police in order to bring an action. Once a criminal notice has been filed, the victim may request that the public criminal action be converted into a private action, which will be handled similarly to a civil action. However, instead of ending with a simple cease and desist order or an order of damages, a private action may end with a conviction and a prison term for the infringer. Trademark infringements can also be challenged through a civil action before a civil circuit judge or the Superintendence of Industry and Commerce. Such civil actions involve two hearings:

  • an initial hearing, in which mediation is sought, the facts are established and evidence to be gathered is ordered; and
  • a trial hearing, in which the gathering of evidence, the presentation of closing arguments and the issuance of a decision may all occur.

Damages in trademark infringement actions may be estimated based on:

  • royalties that could have been obtained by the owner;
  • revenue that was obtained by the infringer;
  • revenue that was not obtained by the victim or legitimate rights holder; or
  • actual damages suffered.

Plaintiffs may also choose to obtain statutory damages ranging from three to 200 minimum monthly legal wages. Both pathways require evidence, a power of attorney and the registration certificate that proves the infringed right.

Civil circuit judges from any judicial district and the Superintendence of Industry and Commerce - a government agency that operates the CTO - are empowered to hear trademark infringement cases. Criminal infringement cases are prosecuted before specialised criminal courts and prosecuted, normally, by the General Attorney’s Office with the titleholder acting as the victim during the process. Annulment actions are heard by the Supreme Court for Administrative Matters, called the Council of State.

Plaintiffs must pursue a criminal action within eight years of the infringement. With respect to civil remedies, the current position of the courts is that the statute of limitations period commences on the date on which the first infringement is committed. In relation to criminal remedies, the law establishes that the statute of limitations period commences on the date on which the infringement actually ceased.

Procedural format and timing

What is the format of the infringement proceeding?

The civil procedure of infringement is divided into two phases:

  • a written initial phase in which the lawsuit is filed and defences and answers are served; and
  • an oral phase, including two hearings, the first of which resolves initial formal defences, a settlement conference takes place in which the judge decides the evidence it will gather or take into account during the trial hearing, and examination and cross examination are heard; during the second, testimonies, experts and closing arguments are attended to and a final ruling rendered.

While testimonies and experts may attend to the trial hearing online, the settlement conference, examination and cross-examination demands the presence of the parties itself and their lawyers.

Cases are decided by civil courts or a specialised court that operates from the Colombian Trademark and Patent Office (SIC). Both courts are part of the judicial branch for this purpose and can decide on damages and their rulings are subject to appeal before the Superior Tribunal of Bogota (Court of Appeals). The appeals do extend to factual discussions and points of law.

Civil cases before the court last a maximum period of 18 months. Appeals are resolved within one year. However, since Andean Laws (laws applicable in the Andean Community) are to be applied, it is mandatory to wait for a pre-judicial interpretation from the Andean Court of Justice to render the decision on the appeal or appeals filed, so the final time frame will depend on how efficient the Andean Court is at the time, which is currently estimated as being between one to one-and-a-half years before its opinion is reached.

On the other hand, if the infringement is wilful and committed by a physical person, it may be prosecuted through criminal law procedures. The process requires an investigation by the prosecutor. If the officer finds evidence to prosecute the case, they will issue an indictment and will present it formally in writing or presented before the court. The defence will have the opportunity to defend itself and ask for full discovery. The trial is generally divided into various oral hearings if it entails a regular trial, similar to those involved in general common-law procedures. If the prosecutor chooses a fast-track procedure, the whole process will be conducted through a single concentrated or merged hearing. Victims (IP titleholders) can actively participate during the investigation and trial phase, submitting evidence, filing motions, participating during the hearings and even appealing decisions. These processes are normally resolved in less than two years because infringers accept the charges or plead guilty during the initial stage. If a strong defence is present, the trial may last more than four years.

Owners are encouraged to work alongside the judicial police to catch criminals in fraganti, because in such cases, the procedure may last between three and four months.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Titleholders or IP owners have the burden of demonstrating the rights they own, the infringement or the potential infringement and the existence of damages in civil procedures. Trademarks are vested with the advantage of statutory damages, which range between US$1,000 and US$50,000. Bad faith or intent to infringe is not relevant to determine the existence of an infringement, but it is for the assessment of damages.

In criminal cases, bad faith and direct involvement need to be proven.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Trademark infringement actions can be filed by:

  • the owner of the trademark; and
  • the authorised distributor or licensee, if it has been expressly empowered to do so by the owner.

If a distributor or licensee has not been expressly empowered or authorised to take action, it may choose to pursue an unfair competition action. Criminal actions may be pursued by any party, including the government, and not only the rights holder.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Customs’ measures are available. It is strongly recommended to record a trademark registration with the customs authorities to help them identify the goods that have been identified as having infringing trademarks. Once an infringement is detected, the customs authorities may stop the shipment and will likely contact the attorney of record or the legitimate owner of the mark. Customs may stop the customs procedure at the trademark owner’s request. Once a border measure is executed (ie, the merchandise is held), the owner has 10 days to file a lawsuit against the infringer.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

There is no specific or mandatory discovery phase. However, direct discovery is encouraged from experience, since the General Procedural Code applicable to civil cases does oblige the courts to deny evidence that could have been obtained directly by the parties. Expert reports have to be filed along with the lawsuit. It is often common for the parties to try to practise discovery and depositions through court orders before a lawsuit is filed. Such extra-procedural orders to gather evidence are thoroughly regulated and used.

In criminal cases, discovery is mandatory during the preparatory hearing or during the initial phase of the concentrated hearing in fast-track cases.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The usual time frame for infringement actions is approximately three years in criminal proceedings and one-and-a-half-years in civil proceedings.

Limitation period

What is the limitation period for filing an infringement action?

The statute of limitations for filing infringement actions is:

  • two years from the date of the infringement for regular trademarks; and
  • five years from the date of infringement for well-known trademarks.

Plaintiffs must pursue a criminal action within eight years from the infringement. With respect to civil remedies, the current position of the courts is that the statute of limitations period commences on the date on which the first infringement is committed. In relation to criminal remedies, the law establishes that the statute of limitations period commences on the date on which the infringement actually ceased.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

In criminal cases, law firms charge for the investigation and research phase no more than US$3,000 to US$5,000. Once the case starts, incurred costs may be between US$4,000 to US$40,000 depending on the complexity of the matter.

In civil cases, law firms charge per hour and optimistic budgets can be about US$15,000 for the whole procedure, excluding appeals. If the case is relatively complex, charges may exceed US$100,000.

Appeals

What avenues of appeal are available?

An appeal may be filed at the end of the trial hearing and arguments must be presented during an oral hearing before the Court of Appeals.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The following defences are available to infringers:

  • the exhaustion of rights;
  • fair use; and
  • the non-existence of infringement.

Lack of use and invalidity may also be alleged through additional counter-lawsuits or counter-claims.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Preliminary injunctions and final orders to cease or prevent infringement are available, and successful plaintiffs may seek monetary relief on the grounds of statutory damages, actual damages, the infringer's revenue or a fictional royalty. Punitive damages are not available and deterrence is not necessarily taken into account in civil cases but in criminal cases. Criminal cases may end up with a defendant's imprisonment for more than eight years in extreme cases.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Amicable composition (a sort of mediation which end up in a mandatory solution reached by a third party), conciliation (which may end up in settlement guided by a mediator), and arbitration (which ends in a final enforceable ruling) are available. Colombia is amenable to arbitration and is part of most international conventions or treaties on the matter.

Arbitration is used and advised in disputes arising from contracts such as licences and franchises.

Conciliation is widely used to solve infringements that are not seen as counterfeiting. Parties are encouraged to seek settlement considering the efficiencies involved.