02-18-2013 (Newsletter Issue 2/13)Official Fees ReducedThe Colombian Trademark Office has reduced its trademark fees effective January 2013.
The office has granted a 50% discount to all those small and medium-sized Enterprise and to the public and private universities which are recognized and approved by our Ministry of Education. A smaller discount was also included for the filing of multiclass trademark application for each addition class, and for trademark renewals.
The new official fees for filing a trademark in Colombia is 750.000 COP in one class, and 375,000 COP in each additional class.
Source: Triana, Uribe & Michelsen, Colombia
05-30-2012 (Newsletter Issue 9/12)
Accession to Madrid Protocol
Colombia became a member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks on May 29, 2012.
The treaty will enter into force with respect to Colombia on August 29, 2012.
03-27-2012 (Newsletter Issue 5/12)
Changes in Registration Procedures
The Ministry of Commerce, Industry and Tourism and the Ministry of Finance issued the Decree No. 4886 on December 23, 2011 which came into force on December 26, 2011. The decree modifies the structure of the Superintendency of Industry and Commerce, the authority in charge of the National Industrial Property System.
The following changes have been made:
- Reconsideration petitions against decisions issued by the Head of Distinctive Signs are eliminated. The only applicable remedy is an appeal, which must be decided by the Deputy Superintendent for Industrial Property.
- The Head of Distinctive Signs is authorized to arrange facilitation hearings between applicants for registration of distinctive signs and opposing third parties, to propose amendments that will allow applications to mature into registrations.
- The Superintendency of Industry and Commerce is authorized to question, under oath and in fulfilment of the formalities in the Civil Procedure Code, any person whose testimony is useful in clarifying the facts of the competition.
Furthermore the Superintendent of Industry and Commerce announced on January 31, 2011, that the Industrial Property Gazette will published twice a month in the future (i.e., every two weeks). Previously, the gazette was published once a month.
Source: www.inta.org; Cavelier Abogados, Bogota; Romero Raad Abogados, Bogota
02-07-2012 (Newsletter Issue 2/12)Accession to TLTThe World Intellectual Property Organization (WIPO) has informed that the Government of the Republic of Colombia last week deposited its instrument of accession to the Trademark Law Treaty (TLT). The treaty enters into force for Colombia on April 13, 2012.
The aim of the TLT is to streamline national and regional trademark registration procedures. This is achieved through the simplification and harmonization of those procedures, thus making trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable.
Colombia's accession to the TLT will bring the number of active participants in the TLT to around 50. The region's participation in the TLT is growing: Colombia joins Costa Rica, the Dominican Republic, El Salvador, Honduras, Nicaragua and Peru.
For more information on the notification, please click here
Source: www.wipo.int and IP Tango
01-23-2012 (Newsletter Issue 1/12)
Accession to Madrid Protocol Expected
After a long process, this July, the Colombian Congress approved the adoption of the Madrid Protocol by Law No. 1455/2011, which was possible thanks to the strong support of multiple local organizations and particularly the Colombian PTO.
The Protocol won't immediately enter in force, as it still must go through other legislative procedures, which will culminate with the deposit of the instrument of accession with WIPO. Approximately three months after this later event, the Madrid Protocol will be available in the first South American country and is therefore expected soon.
Source: Moeller IP Advisors
04-15-2010 (Newsletter Issue 9/10)Domain Name Registration Opened The Colombian Domain Administration has recently opened the second level domain registration for trademark registered world widely.
The .CO launch starts from 1 April, involving a multi-phase plan to ensure for the stable and orderly distribution of domains.
For more information please click hereSource: www.moellerip.com
Legal basis is the Trademark Law, contained in the Andean Pact Decision 486 concerning industrial property, in force since December 1st, 2000.
Colombia is a member of the Madrid Protocol and a member of the Andean Pact. According to the Andean Pact agreement, there are common rules in trademark law in all member states of the Andean Pact (Bolivia, Colombia, Ecuador, Peru).
Trademark protection is obtained by registration.
Nice classification, 10th edition
Registrable as a trademark are all distincetive signs that can be graphically represented, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks, and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks and trade names.
The application is filed at the Trademark Office.
Multi-class applications can be filed.
Foreign applicants need a local agent.
A power of attorney will be necessary to complete a trademark application.
The power of attorney will only need to be signed by a representative of the company that grants it, and can be filed in a simple copy. The original document may be requested by the Trademark Office if said entity has doubts on the authenticity of the same.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use. The burden of proof of demonstrating distinctiveness acquired by use rests on the applicant.
The processing time from first filing to registration is approx. 4-6 months. when no third party oppositions are filed and no ex officio rejections are issued.
The first office action is taken after approx. 15 working days.
Prior to registration, the trademark application is published in the “Gaceta de la Propiedad Industrial” for opposition purposes. As from January 31, 2012, the gazette is published twice a month.
The opposition period is 30 working days from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
30 days from the publication in the local Gazette.
A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
If the registered trademark has not been used for a continuous period of 3 years in a member state of the Andean Pact, it can be subject to cancellation action, started by any third interested party.
The official fees for filing a trademark in Colombia is 750.000 COP in one class, and 375,000 COP in each additional class. There is no additional fee for publication or for obtaining the certificate of registration.
Trademark Licence Agreement
In Colombia licence agreements must be in writing. It is not permitted to license the use of unregistered marks. A proprietor may grant a licence in respect of only some of the goods and/or services in respect of which the mark is registered. Whether the sale of a registered trademark automatically terminates the licence or not depends on the terms of the agreement. The licence may provide that subsequent owners of the trademark shall be bound by the agreement. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the recordal of a licensee with the Trademark Office. Recordal is not mandatory, but is required for opposition purposes. There is no time frame for a recordal.
The following documents are required for a recordal:
1. Original or simple copy of the licence agreement. If the agreement is in a language other than Spanish, a simple translation will be required.
2. Power of attorney from both the licensor and the licensee, executed before a notary public and apostilled or legalised up to the Colombian Consulate in the signatory’s domicile granted by any interested party.
The licence agreement becomes enforceable against third parties upon recordal with the Trademark Office. If the trademark is already granted, the recordal will be effected within 8 to 15 working days and the agreement will be enforceable from the date of filing of the documents for recordal. In the case of a pending application, the recordal will be effective from the date of grant of the trademark. The licence is not required to be published.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. The licensee may not call upon the trademark owner to institute infringement proceedings. He may not institute proceedings in his own name, even if the proprietor neglects to do so.
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We would like to thank the following law firms for their assistance in updating the information provided:
03-01-2013Triana, Uribe & Michelsen
, Bogota, Colombia
07-06-2011Clarke, Modet & Cº Colombia
, Bogotá, Colombia Licensing
03-01-2013Triana, Uribe & Michelsen
, Bogota, Colombia
Cavelier Abogados, Bogotá, ColombiaClarke, Modet & Cº Colombia
, Bogotá, Colombia