Registration and use

Ownership of marks

Who may apply for registration?

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

Scope of trademark

What may and may not be protected and registered as a trademark?

In Colombia there are no rights under the common law, under article 134 of Andean Decision 486/2000, the following signs, among others, may constitute marks under a registration:

  • 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 colours;
  • the shape of a product, its packaging or wrapping; and
  • any combination of the signs or elements specified above.

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.

Unregistered trademarks

Can trademark rights be established without registration?

While unregistered trademarks have no direct 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. 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 No. 256/96.

Exemptions to these rules are the well-known trademarks that are protected without registration.

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. On the other hand, to apply the well-known trademark exemption, the plaintiff or opposing party has to demonstrate that the mark that is supposedly well known was recognised as such by the pertinent or relevant market.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

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 6-bis 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. The protection of well-known marks is regulated in Title XIII, articles 224 to 236 of Andean Decision 486/2000. 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.

Notwithstanding the above, owners of registered trademarks in another Andean Community member country (ie, Ecuador, Bolivia or Peru) 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 that 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).

It is not required for well-known trademarks to be registered in Colombia in order to grant them protection. As to protecting a foreign famous mark as a well-known mark, it does have to be a well-known mark in Colombia. It is difficult to prove that a foreign mark is well known if it is not used in Colombia.

The benefits of registration

What are the benefits of registration?

Given that trademark rights in Colombia are acquired with the registration and not the use, the main benefit from registration is the granting of an IP right over the trademark. 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.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A trademark application must include the following information and documents:

  • the CTO filing form, which must include:
    • the applicant’s name, address and nationality or domicile;
    • an indication of the mark to be protected;
    • the mark’s type; and
    • a description of the goods or services and the corresponding class of the Nice Classification (NCL) of goods and services;
  • a reproduction of the mark, if it is:
    • a word mark featuring graphic elements, shapes or colours;
    • a figurative or design mark; or
    • a composite or three-dimensional mark with or without colour;
  • a power of attorney signed by the applicant is required. Neither notarisation nor legalisation is required (unless the document’s validity is questioned by the CTO, in which case these formalities may be required). The filing of a scanned copy of a signed power of attorney will suffice;
  • proof of payment of the official fees; and
  • where priority is claimed, the registration certificate of the country of origin (issued by the authority that granted it) or a certified copy of the trademark registration on which the priority claim is based.

The main rules that govern the representation of marks in Colombia are as follows:

  • The standard typographical font characters used by the CTO, for the registration and publication of distinctive signs, are Arial, Arial Narrow and Times New Roman.
  • Where a mark includes graphic elements (ie, marks with a design), the application must include one reproduction of the mark in JPEG format (maximum size of 450 x 450 pixels and 2 megabits) in colour (if colours are claimed) or black and white.
  • Where the applicant of a composite, figurative, design or three-dimensional mark wishes to claim the colour as a distinctive characteristic of the mark, it must declare it and indicate the colour or colours to be claimed and their location within the sign, describing the colour or using a colour code system (eg, noting the corresponding Pantone colour number).
  • For three-dimensional marks, the mark’s reproduction must consist of a two-dimensional graphic or photographic reproduction, provided that it can sufficiently show the details of the mark. This must be provided in JPEG format (maximum size of 450 x 450 pixels and 2 megabits). If the graphic reproduction does not meet this requirement, the applicant must provide up to six different views of the mark and a written description of the same.
  • Where a mark consists totally or partially of non-Latin characters or non-Arabic or Roman numbers, the applicant must indicate whether the trademark is figurative or a word mark. If it indicates that it is a word mark, a transliteration or translation of that content must be submitted in Latin characters or Arabic numbers.

Electronic filing is available in Colombia. The CTO encourages applicants to use this service by offering a lower official fee for procedures filed online.

Trademark searches are available but not required before filing with the CTO. It is possible to request an availability search online before the CTO; the fees for which are US$12 for one mark in one class and US$6.66 for one mark in each additional class. The CTO offers official results without any legal opinion.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The CTO can take between seven and nine months to review and decide a trademark application if there are no obstacles during the procedure; however, proceedings may take up to 18 months if obstacles such as office actions or oppositions are raised.

Trademark registrations come into effect once the granting decision is final.

The official fees for an online trademark application in Colombia for 2019 are set out in US dollars below (although the published fees are represented in Colombian pesos):

  • an application for one mark or slogan in one class: US$26.21; and
  • an application for one mark or slogan in each additional class: US$131.37.

The CTO increases these fees annually. There are no registration fees once the application has been accepted for registration.

The circumstances that would increase the estimated cost of filing a trademark application and receiving a registration would be either the filing of an opposition by a third party, or a registration refusal on first instance by the CTO that would lead to the submitting of an appeal. In the former situations, there are particular fees to be paid to the CTO, and the cost would also increase because of lawyer fees.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The classification system followed is the NCL, established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957. The CTO uses as a reference for the review of the description of goods and services the Madrid Goods and Services Manager, and TMclass only for the goods that are harmonised with the CTO. Multi-class applications are allowed in Colombia. An additional cost applies for each class included in an application.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

In a preliminary instance, a CTO officer will verify fulfilment of formal aspects of the application. After the application has been published for 30 working days, the CTO will conduct a substantial examination, verifying that the mark has no absolute grounds for refusal and that there is no likelihood of confusion with any prior trademark rights.

The CTO checks for both absolute and relative grounds and may refuse the registration of a trademark ex officio based on those grounds. The CTO searches its database to check that there are no prior rights for marks that may be identical or similar to an applied-for mark.

The CTO usually returns an initial application to the applicant, requesting it to complement or clarify sections that are unclear or incomplete. These corrections are covered by the initial fee paid and once they have been made, the application will be the subject of a substantive examination by the CTO.

Letters of consent could be accepted to overcome an objection based on a third-party mark, as long as the parties try to demonstrate that with the coexisting of the marks there would be no likelihood of confusion among consumers.

Rejected applications can be appealed. The procedure consists of filing a brief before the CTO within 10 working days from a decision’s notification. Decisions are considered to have been notified one month after the email notifying the applicant is sent.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Neither claim nor proof of use are required before registration, or after a given period of time. The priority rule applied in Colombia, is, as established in the Paris Convention, that six months after the submitting of an application the applicant has a priority right for the same trademark application over any other contracting party. Priority must be claimed in the trademark application filing form. Proof of payment of the corresponding official fee must be enclosed with the application, along with the registration certificate on which the request for priority is based or a certified copy thereof. This document must be filed with the application or within three months of the application date.

After three years of registration, trademarks become vulnerable to cancellation actions based on non-use. Although no claim or proof of used is required after said period of time, in the event of a cancellation action, the holder of the mark would have to proof the use of the mark In order to defend themselves. A third party wishing to cancel a mark must file a non-use cancellation action before the CTO. Marks are not cancelled on grounds of non-use ex officio. Once the CTO has accepted an action, the trademark will have 60 days to file evidence of use or a valid justification for the mark’s lack of use in connection with the protected goods or services.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is neither required nor foreseen by Colombian trademark law.

Appealing a denied application

Is there an appeal process if the application is denied?

CTO first instance decisions are subject to appeal by any of the involved parties. The appeal process is led before the CTP, and an appeal can be filed against a first-instance decision within a month and 10 working days after the resolution being issued, they must file an appeal brief before the CTO within 10 working days from the decision’s notification.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Yes, third parties can formally oppose any application on both absolute and relative grounds, and the primary bases of such challenges are usually relative grounds (similarity with trademark rights of third parties). Any third party wishing to file an opposition against an application must do so during the 30-working-day publication period. The CTO can take up to 18 months to resolve trademark applications against which an opposition has been filed.

To fight a bad-faith application for a brand owner’s mark in a jurisdiction in which it does not have protection, unfair competition actions provided by Colombian legislation can be filed.

The official fees for the filing of oppositions, as to 2019, are as follows:

  • filing opposition against a trademark application in one class: US$137;
  • filing opposition against a trademark application in additional class (multi-class application): US$137; and
  • filing oppositions based on notoriety or well-known condition of the trademark, review and filing of evidence: US$270.
Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The term of trademark protection in Colombia is 10 years from the day on which the granting decision is final. A renewal can be filed within the six months before its deadline or during the six-month grace period after the deadline. To maintain the registration, the holder does not have to demonstrate the use of the mark, although it could be cancelled on the grounds of non-use, if a third party filed a cancellation action.

Surrender

What is the procedure for surrendering a trademark registration?

The rights holder or attorney of record must file a request to surrender the right. If the request is made by the attorney of record, the power of attorney must expressly authorise the attorney to surrender the trademark registration. A request by an attorney must be certified by a notary and bear a notary seal.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, trademarks can be protected under other IP rights if they fulfil the requirements of the regulations applying to those other IP rights. For instance, for a design to be protected as an industrial design, it must fulfil the novelty requirement and have a particular aesthetic appearance. In the case of copyrights, the mark must be original.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Domain names are regulated under the Internet Corporation for Assigned Names and Numbers provisions. There is no specific regime that regulates the registration of trademarks for online use.