What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks in Colombia is Andean Decision 486/2000, which is a regional law that has been in force since 14 September 2000 and applies to all Andean Community member countries (ie, Peru, Ecuador, Bolivia and Colombia). This law has been adopted through local legislation in each country and regulates the protection and enforcement of IP rights in the Andean Community.
Which international trademark agreements has your jurisdiction signed?
Colombia has signed the following international trademark agreements:
- Andean Decision 486/2000, which includes industrial property regulations for the Andean Community countries;
- Andean Decision 689/2008, which amended certain regulations of Andean Decision 486/2000;
- the Paris Convention for the Protection of Industrial Property 1883;
- the Colombia-France Convention 1901, ratified by Colombia in 1904;
- the Madrid Agreement concerning the International Registration of Marks;
- the Trademark Law Treaty;
- the Agreement on Trade-Related Aspects of IP Rights; and
- the General Inter-American Convention for Trademark and Commercial Protection 1929.
Which government bodies regulate trademark law?
The highest authority in Colombia regarding the protection of industrial property rights (ie, trademarks, industrial designs and patents) is the Superintendence of Industry and Commerce – a government agency which operates the Colombia Trademark Office (CTO). In addition to its administrative functions, which include the protection and management of trademark rights, the CTO has jurisdictional functions; thus, it also issues decisions in trademark infringement cases.
Rights and protection
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).
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).
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.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
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 Colombia Trademark Office (CTO), in which case these may be required). The filing of a scanned copy of a signed power of attorney will suffice.
What information and documentation must be submitted in a trademark registration application?
A trademark application must include the following information and documents:
- the CTO filing form, which must include:
- the applicant’s name and address and nationality or domicile;
- an indication of the mark to be protected;
- the mark’s type;
- a description of the goods or services and the corresponding class of the International Nice Classification 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 color;
- the power of attorney;
- 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.
What rules govern the representation of the mark in the application?
The main rules that govern the representation of marks in Colombia are as follows:
- The standard 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 JPG format (maximum size of 450 x 450 pixels and 2MB) 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).
- 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 JPG format (maximum size of 450 x 450 pixels and 2MB). 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.
Are multi-class applications allowed?
Yes, multi-class applications are allowed in Colombia. An additional cost applies for each class included in an application.
Is electronic filing available?
Yes, electronic filing is available in Colombia. The CTO encourages applicants to use this service by offering a lower official fee for applications filed online.
What are the application fees?
The official fees for an online trademark application in Colombia for 2018 are set out in US dollars below (although the published fees are represented in Colombian peso):
- an application for one mark or slogan in one class – $329;
- an application for one mark or slogan in each additional class – $164;
- an application for one collective certification mark in one class – $437; and
- an application for one collective certification mark in each additional class – $219.
The CTO increases these fees annually.
How are priority rights claimed?
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 from the application date.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
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 $15 for one mark in one class and $8 for one mark in each additional class. The CTO offers official results without any legal opinion.
What factors does the authority consider in its examination of the application?
In a preliminary instance, the 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.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes. 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 in order to check that there are no prior rights for marks that may be identical or similar to an applied-for mark.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
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.
Can rejected applications be appealed? If so, what procedures apply?
Yes, 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.
When does a trademark registration formally come into effect?
Trademark registrations come into effect once the granting decision is final.
What is the term of protection and how can a registration be renewed?
The term of protection of a trademark 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.
What registration fees apply?
There are no registration fees once the application has been accepted for registration.
What is the usual timeframe from filing to 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.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes, third parties can formally oppose any application on both absolute and relative grounds. Any third party wishing to file an opposition against an application must do so during the 30-working-day publication period.
What is the usual timeframe for opposition proceedings?
The CTO can take up to 18 months to resolve trademark applications against which an opposition has been filed.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes, opposition decisions are subject to appeal; if any of the involved parties wants to file an appeal, they must file an appeal brief before the CTO within 10 working days from the decision’s notification.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes, marks may be cancelled due to non-use. The term for non-use is three years from the date on which the mark is registered. A third party wishing to cancel a mark must file a non-use cancellation action before the Colombia Trademark Office (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.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
Trademark registrations may be revoked based on loss of distinctiveness – either ex officio or based on a third-party request, a cancellation action or non-use or notoriety. Registrations may also be revoked by means of an annulment action raised before the state counsel based on incorrect registration due to violation of the law.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any interested party can file such a request. As regards limitation, cancellation actions on the basis of notoriety and loss of distinctiveness may be filed at any time; however:
- cancellation actions on the basis of non-use can be filed only after three years from the granting date; and
- annulment actions must be filed within five years from the decision’s issuance.
What are the evidentiary and procedural requirements for revocation proceedings?
Evidence of grounds for revocation must be filed with the request. The owner will be notified of the decision if there are no issues on formalities. In such cases, the burden of proof is on the rights holder.
What is the appeal procedure for cancellations or revocations?
Any party involved in a cancellation procedure can file an appeal against a CTO decision within 10 working days from the issuance of the first-instance decision. Appeals cannot be filed against decisions on annulment actions.
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.
Which courts are empowered to hear trademark disputes?
Civil circuit judges from any judicial district and the Superintendence of Industry and Commerce – a government agency which operates the Colombia Trademark Office (CTO) – are empowered to hear trademark disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
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 jail time 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 trial, 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.
Who can file a trademark infringement action?
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.
What is the statute of limitations for filing infringement actions?
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.
What is the usual timeframe for infringement actions?
The usual timeframe for infringement actions is approximately three years in criminal proceedings and one-and-a-half-years in civil proceedings.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Injunctions may be filed, prior to filing a lawsuit. Once an injunction has been granted, the plaintiff has 10 days to file the lawsuit brief as of the preliminary injunction’s execution date. In order to obtain an injunction, it must be proved that the case is likely to have merits and that there is an imminent potential risk of greater damage to the legitimate owner if appropriate measures to stop the infringing activities are delayed. Further, the plaintiff must pay a bond to cover potential damages. Injunctions can be obtained without the counterparty’s intervention.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Cease and desist orders and damages are available in infringement actions. No punitive damages are allowed.
What customs enforcement measures are available to halt the import or export of infringing goods?
Customs measures are available. It is highly recommended to record a trademark registration with customs in order to help the authorities to identify the goods that have been identified with infringing trademarks. Once an infringement is detected, Customs 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.
What defences are available to infringers?
The following defences are available to infringers:
- the exhaustion of rights;
- fair use; and
- the inexistence of infringement.
What is the appeal procedure for infringement decisions?
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Assignment agreements have effect on execution between the parties; however, they are enforceable only if recorded with the Colombia Trademark Office (CTO) (ie, failure to register will render the assignment or transfer invalid with respect to third parties).
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Licence agreements are enforceable between the parties on execution. It is not mandatory to record a licence agreement before the CTO; however, if the licensor is located abroad and the licensee wishes to benefit from tax regulations, the agreement must be registered with the tax authority.
Failure to register will render the licence invalid with respect to third parties. In order to be registered, licences must be made in writing. Any interested party may request the registration of a licence.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The following provisions are typically included in a licensing agreement:
- the right to manufacture goods and identify them with the registered mark; and
- the right to use the mark in advertising materials.
Quality control clauses are also typical and clauses regarding the enforceability of rights can be included.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Yes, under Law 1676/2013, a security interest can be registered over a trademark. Security interests must be registered or recorded with the CTO.
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, in order 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.