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Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership is determined on a first-to-file basis because, in accordance with Andean Decision 486/2000, trademark rights cannot be acquired without going through a registration process before the Colombia Trademark Office (CTO).

Unregistered trademarks

What legal protections are available to unregistered trademarks?

While unregistered trademarks have no legal protection, Article 135 of Andean Decision 486/2000 confers protection on trademarks that may be considered descriptive initially, but later acquire distinctiveness and become protectable. In order to obtain this status, the applicant must prove that the mark has acquired distinctiveness through robust evidence and request that the mark be considered distinctive and therefore able to be registered.

Conversely, while trademark protection can be acquired only through registration in Colombia, a person or entity whose trademarks are not registered and which is the victim of unlawful acts of unfair competition can take legal action under the Unfair Competition Law (256/96).

How are rights in unregistered marks established?

As mentioned above, the rights provided to users of trademarks under Andean Decision 486/2000 are acquired only through registration. However, prior use of a sign or mark in a certain economic sector may form the basis of an action against unfair competition.

Are any special rights and protections afforded to owners of well-known and famous marks?

Title XIII (Articles 224 to 236) of Andean Decision 486/2000 regulates the protection of well-known marks. Special protection is granted to such marks if their owner can prove the mark’s alleged reputation in connection with certain or a wide range of goods or services. This special protection is granted even if the trademark is not registered in Colombia and its owner may file oppositions against any third party that attempts to register an identical or confusingly similar mark. Well-known marks also have special protection in non-use cancellation proceedings pursued against them, as the owner of a well-known mark may submit evidence of its well-known status as the basis of its defence.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign trademark registrations are not recognised in Colombia unless the mark is well known. For instance, taking into account not only Andean Decision 486/2000, but also Article 6bis of the Paris Convention, the registration of a mark should be refused in Colombia if the mark is identical or confusingly similar to a well-known mark protected in one of the Paris Convention member countries.

Notwithstanding the above, owners of registered trademarks in another Andean Community member country (ie, Peru, Ecuador or Bolivia) may file an opposition against a trademark application in Colombia based on their prior rights. Further, according to Article 7 of the General Inter-American Convention for Trademark and Commercial Protection, the owner of a mark protected in one of the contracting states which has knowledge that a third party is applying to register an identical or similar mark in any of the other contracting states (eg, Colombia) may file an opposition on receiving proof that the applicant had knowledge of the existence and continuous use in any of the contracting states of the mark on which the opposition is based in connection with the goods or services of the same class. In addition, the opposer may claim the preferential right to use or register such a mark in the country (in this case, Colombia).

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The most important right acquired on a successful registration is the exclusive right to use the mark in the country and the possibility to prevent third parties from using both confusingly similar and identical signs. The owner of the mark will also be granted the rights to:

  • use the trademark as an intangible asset;
  • license the trademark;
  • file an opposition on the grounds of likelihood of confusion; and
  • obtain border and customs protection for the trademark.

Who may register trademarks?

Any interested person of national or foreign origin (both individuals or legal entities) may file a trademark application before the CTO for registration.

What marks are registrable (including any non-traditional marks)?

Under Article 134 of Andean Decision 486/2000, the following signs, among others, may constitute marks:

  • words or word combination images;
  • pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels and emblems;
  • sounds and smells;
  • letters and numbers;
  • a colour within an outline or a combination of colors;
  • the shape of a product, its packaging or wrapping; and
  • any combination of the signs or elements specified above.

Can a mark acquire distinctiveness through use?

Yes, a sign may be registered as a mark if it has been used continuously and, as a consequence of such use, acquired distinctiveness in relation to the goods or services that it identifies.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

In Colombia, a mark may be refused on absolute and relative grounds. The absolute grounds are set out in Article 135 of Andean Decision 486, according to which a mark cannot be registered if it:

  • fails to constitute a trademark according to the requirements listed in Article 134(1) (ie, signs that are incapable of identifying goods or services in the market or that cannot have a graphic representation);
  • lacks distinctiveness;
  • consists solely of the everyday shape of the associated goods or their packaging or of shapes or characteristics dictated by the particular nature or function of the associated product or service;
  • consists solely of shapes or other elements that afford a functional or technical advantage to the product or service to which it is applied;
  • consists solely of a sign or statement that may serve in business to describe the quality, quantity, purpose, value, geographical origin or time of production or imparts other data, characteristics or information concerning the products or services for which the sign or statement is to be used, including expressions of praise of those goods or services;
  • consists exclusively of a sign or statement which is the generic or technical name of the product or service;
  • consists solely of or has become a sign or statement which, in everyday language or normal use within the country, is the common or usual designation for the goods or services in question;
  • consists of a colour in isolation, without any demarcation to give it a specific shape;
  • may lead to confusion in business circles or the public, particularly as to the geographical origin, nature, manufacturing methods, characteristics or qualities of the goods or services concerned or their suitability for use;
  • reproduces, imitates or contains 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 constitute misappropriation of its notoriety;
  • contains a protected appellation of origin for wines and spirits;
  • consists of a national or foreign geographical indication liable to cause confusion with regard to the goods or services to which it applies;
  • reproduces or imitates, as a trademark or element of that trademark, without the permission of the competent state authority or international organisation concerned, heraldic elements, such as coats of arms, flags and emblems or official signs and stamps used for the purposes of government control and guarantee or the coat of arms, flags and other emblems, initials or designations of any international organisation;
  • reproduces or imitates 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;
  • reproduces, imitates or includes the denomination of a plant variety protected in a member country or abroad, if the sign is intended for goods or services relating to that variety or where such use would be liable to cause confusion or association with it; or
  • is contrary to law, morality, public policy or good manners.

Conversely, the relative grounds are delimited in Article 136 of Andean Decision 486/2000, which establishes that signs which are used in the market and unduly harm a third-party right cannot be registered as marks – namely, when 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;
  • are identical or similar to a protected trade name or a label or emblem whose use would, given the circumstances, result in a likelihood of confusion or mistaken association;
  • are identical or similar to an advertising slogan filed for registration or registered whose use would, given the circumstances, result in a likelihood of confusion or mistaken association;
  • are identical or similar to a third-party’s distinctive sign insofar as their use might, under the circumstances, result in a likelihood of confusion or association when the applicant is or has been:
    • a representative or distributor of the owner of the distinctive sign in the member country or elsewhere; or
    • expressly authorised by the right holder;
  • consist of a sign that affects the identity or prestige of legal entities, either for profit or non-profit, or natural persons other than the applicant identifiable by the general public as being such a different person (particularly with regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait or caricature) where no consent has been obtained from that person or, if deceased, from the declared heirs of that person;
  • consist of a sign that infringes a third-party’s industrial property rights or copyright, except where consent has been obtained;
  • consist of the names of indigenous Afro-American or local communities or the names, words, letters, characters or signs used to identify their goods or services or methods of 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; or
  • constitute a total or partial reproduction, imitation, translation, transliteration or transcription of a well-known distinctive sign belonging to a third party, regardless of the goods or services to which the sign is applied, whose use would lead to a likelihood of confusion or association with that third party or with its goods or services, taking unfair advantage of the prestige of the sign or weakening its distinctive force or its use for commercial or advertising purposes.

Finally, Article 137 of Andean Decision 486/2000 states that a mark may be refused when the CTO has reasonable grounds to believe that its registration has been applied for in order to perpetrate, facilitate or consolidate an act of unfair competition.

Are collective and certification marks registrable? If so, under what conditions?

Collective and certification marks may be registered in Colombia. Legally established associations of producers, manufacturers, service providers, organisations or groups of persons may apply for the registration of a collective mark in order to identify the goods or services of their members in the market. The registration application must specify that the application has been filed for a collective mark and be accompanied by:

  • a copy of the articles of association of the organisation, association or group of persons applying for the collective trademark’s registration;
  • a list of the members; and
  • a statement of the conditions and form in which the collective mark will be used in connection with the goods or services.

Once a collective mark’s registration has been secured, the association, organisation or group will inform the CTO of any changes that may occur to any of the documents listed above.

Conversely, certification mark applications require:

  • the rules for using the mark, which must specify the goods or services that may be subject to certification by the title holder;
  • a description of the characteristics guaranteed by the mark’s presence; and
  • a description of the type of control that will apply to the mark’s characteristics before and after the mark’s use has been authorised.

The owner of a certification mark may authorise any person to use it provided that their goods or services meet the conditions stated in the mark’s rules of use.

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