Trademark Information of Colombia

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

• Use of an unregistered mark for any goods or services is legal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

Although there is no potential or specific legislation under consideration, there is some evidence at the Ministry of Labor that they are studying such matters.

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

six to eight months.

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark;
  • it provides regional, national, and/or local protection;
  • it allows the registrant access to bring actions in particular courts;
  • it helps to deter others from unlawfully using the trademark;
  • it provides a defense to infringement;
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
  • it confers the ability to recover maximum monetary damages for infringement;
  • it encourages licensees and provides the opportunity to generate royalties through licensing.

II. Pre-Filing

A. Registrable Trademarks

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes

(if distinctive);

• colors

(within a shape);

• slogans;
• sounds;
• smells (olfactory trademarks);
• trade dress/get-up

(if filed as a design and if distinctive);

• holograms;
• motion;
• taste;
• touch;
•  positions, which are intended to protect a particular position of the trademark in a product (e.g., the red Levi's® trademark tag on the rear pocket).

• The special requirements for the registration of three-dimensional shapes are:

 submission of upper, lower, and lateral views, and perspective in hard copy or digital format.

• The special requirements for the registration of colors are:

 should be limited to a particular shape.

• The special requirements for the registration of sounds are:

 submission of a musical staff (pentagrama).

• The special requirements for the registration of smells are:

 submission of the chemical formula in a particular environment and a description of the smell.

• The special requirements for the registration of trade dress are:

 the filing of a design mark, word+design mark, or three-dimensional mark.

• The special requirements for the registration of holograms are:

 While holograms are not protected as such in Colombia, one may try to protect them as a three-dimensional trademark and/or a design trademark, depending on the particular case.

• The special requirements for the registration of motion are:

 a description of the motion should be submitted.

• The special requirements for the registration of taste are:

 the chemical formula and a description of the taste.

• The special requirements for the registration of touch are:

 a drawing of the shape and a description of the touch.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations

only if they are not specifically claimed as black and white marks.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

They are usually included in International Class 35 and should be defined clearly.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as surnames

(could be registered unless the surname is well known, in which case the Colombian PTO may issue an office action to submit the authorization);

• marks that function principally as geographic location names (but not geographical indications or appellations of origin)

(However, products/services that are not directly related to the geographic location are allowed.);

•  marks that infringe a copyright.

• Geographical indications (GIs) are protected in this jurisdiction.

A geographical indication is protected in this jurisdiction only if it is designated as an appellation of origin.

• GIs are protected by way of:
  • special laws for the protection of geographical indications or appellations of origin;
  • trademark laws, in the form of collective marks or certification marks;
  • laws against unfair competition;
  • consumer protection laws;
  •  Indications of origin shall be understood to be a name, expression, image, or sign that indicates or evokes a particular country, region, locality, or place, and may not be used in the course of trade for a good or service where that indication is false or misleading or where its use is likely to cause confusion in the public as to the origin, source, quality, or any other characteristic of the good or service in question.

• The following products or categories are subject to GI protection in this jurisdiction:

There is no limitation of products or categories; for example, food, beverages, pottery, hats, certain types of jewelry, and textiles can be subject to GI protection.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  • disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law;
  •  help to discover whether any particular word/device is generic according to Colombian usage.

• The national office is accessible online at the following URL:

 www.sic.gov.co

• The official register can be searched online at the following URL:

 https://www.sic.gov.co/
The database can be accessed online to check the status of a particular application/registration and to double-check marks that are identical or contain the same initial letters or words. Confusingly similar words and/or devices cannot be searched.

C. Use

• An applicant does not benefit from pre-filing use of a trademark unless that trademark is declared notorious by the Colombian PTO.
• When a mark is not registered, use of that mark may provide the following benefits:
  • Courts may protect unregistered trademarks in some exceptional cases.

 This is related to trade dress cases and notorious trademarks.

• Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  •  Famous and/or well-known marks are protected, besides the trademark registration, through a notoriety declaration, which can be obtained before the Colombian PTO in different administrative proceedings, such as: filing an opposition, answering an opposition, filing a cancellation action based on notoriety, answering a cancellation action based on non-use or vulgarization; also, a notoriety declaration could be obtained before a court, i.e., nullity action. The notorious trademark may not be registered ever. Notoriety could be based in domestic notoriety or foreign notoriety (Andean Community countries).

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Trademark Law Treaty;
  • Madrid Protocol.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

The minimum requirement is providing an address; one should also appoint a local attorney except when one files using the Madrid Protocol. When using the Madrid Protocol, one should appoint a local attorney to reply to office actions/oppositions and to file appeals, and, after grant, to answer cancellation actions.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

However, the trademark registration may be canceled based on non-use being filed against the trademark registration after the third year (at a minimum).

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register)

(if it is not a word);

• list of goods/services;
• official filing fee;
•  an email address for notice of service.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • official filing fee.

• The list of goods and services in this jurisdiction may specify:
  • a list of names commonly used in the trade for the specific goods or services of interest.

• The following number of copies of the trademark must be submitted:

none.

• Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
  • in response to an official request by the Colombian PTO;
• if there is a change of attorney.

• In this jurisdiction, the following types of registration are available:
  • national;
  • international.

Colombia is part of the Madrid Protocol effective as from August 29, 2012.

• This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

• Applications can be filed online at the following URL:

 www.sic.gov.co, but foreign applicants should appoint a local attorney except when using the Madrid Protocol.

• The official file can be accessed online at the following URL:

 www.sic.gov.co

• Applications are officially searched as to prior trademarks.

According to Decision 486 issued by the Andean Community, the PTO should conduct a substantial examination before granting/denying a trademark application on absolute and relative grounds.

B. Priority

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
• If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)
• If an applicant's home country is a member of the Andean Community, it should be possible to claim the home filing date. (Consult a local trademark attorney.)

Andean Community applications are subject to priority within their member countries.

• An International Registration can be based on a national application or registration in this jurisdiction.

 According to the Madrid Protocol, an International Registration may use a prior Colombian application/registration as a basis.

C. Classification

• This jurisdiction does not use the Nice Classification System precisely, but does use it as a general guide.

According to Decision 486 issued by the Andean Community, Article 151, the members of the Andean Community, including Colombia, shall use for the purpose of trademark classifications the International Classification of Trademarks provided by the Nice Arrangement adopted in 1957 and its updates.

• If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes:

 one. Payment must be made per additional class according to the governmental fee schedule issued by the Colombian PTO on an annual basis.

D. Representation

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, but only if a citizen of or domiciled in the jurisdiction;
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

There are no agents in Colombia, so it needs to be the applicant itself or a resident attorney in Colombia. The power of attorney is not needed, but the Colombian PTO may ask for it at any time. The power of attorney can only be granted by the grantor signing it, and it may be sent via email.

IV. Application

A. Publication

• The filing particulars of an application are made available to the public.

Particulars include name of the owner, owner's address, attorney's name, and contact details of licensees, assignees, etc., if the applicant has reported such.

• The filing particulars are made available to the public:
  • through publication and online.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • citizenship of applicant;
  • application number;
  • application date;
  • goods/services;
  • priority claim information;
  • representation of trademark.

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application

(The list of goods/services should be specific; otherwise, an office action may be issued.);

• clarity: i.e., that descriptions are clear and understandable;
• descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
• distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
• deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
• conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search;
•  consumer confusion and copyrights. The examination is made to verify that the application complies with substantive and relative grounds.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
  • The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

This is because the trademark authority should be confident that no confusion to the consumers will be caused.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

One may disclaim that a part of the trademark, which usually would be generic or descriptive, won't be covered.

• The order of the application process is as follows:
  • publication, examination, registration.

After publication, third parties may file an opposition, and if so, the opposition is served to the applicant and the applicant may answer it or not. Whether or not the opposition is filed, once it is past the deadline to answer the opposition, then the examination happens. Once the trademark is granted or denied, the applicant/opponent may file an appeal, which may be served on the other party if new evidence is submitted.

C. Prosecution

• Accelerated examination may be requested.

According to Resolution 48348, the Colombian PTO has allowed accelerated examination only if the applicant accepts in advance that the Colombia PTO will revoke the registration if during the first six months from the application date, the applicant has filed another trademark application with priority rights. This is only for domestic applications and not for Madrid Protocol designations.

• A reason for acceleration is not required.

• A fee for acceleration is not required.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

D. Opposition

• Opposition is available.

 Opposition is available for third parties within 30 working days after publication.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark)

(The notoriety shall be declared by the Colombian PTO or by other Andean Community PTOs (Ecuador, Peru, Bolivia).);

• rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
• rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
• rights under Article 8 of the Paris Convention (trade names);
• registered design rights;
• rights in a personal name;
• the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
• the mark consists of a geographical indication (or an indication of origin);
• the mark is against public policy or principles of morality;
•  
  • the trademark application implies, or it is used to perform, an unfair competition action;
  • a color itself not limited by a device or form;
  • previous rights based on rights different from trademarks, such as trade names;
  • if the mark is breaching a trademark or a trade name protected under the Washington Convention, 1929.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date:

the working day after the publication is released.

• The opposition period ends on the following date:

the 30th working day after the day following that of the publication.

• The following parties may initiate an opposition:
  • any interested party;
  • the owner of an earlier right;
  • a licensee

 (if, according to the licensing agreement, it keeps that faculty);

•  anyone representing a true interest, e.g., representing consumers.

• Oppositions can be filed online.

However, if one wants to submit evidence that cannot be submitted electronically (samples or specimens), then one should file a supplement before the Colombian PTO.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

• An application can be assigned.

An application can be assigned. The application may be assigned through an assignment agreement. The assignment must be recorded before the Colombian PTO as a modification of the applicant on the application. Please note that because the trademark and slogan system is based on registration, an assignment can be properly done only once the right is granted; before that, the applicant has only an expectation (an application). The information below reflects this concept.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

The Colombian PTO may reject the assignment if it considers that the goods/services kept for the assignor and those kept for the assignee could cause confusion in the market or for customers.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

The Colombian PTO may reject the assignment if it considers that the goods/services kept for the assignor and those kept for the assignee could cause confusion in the market or for customers.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • signature by assignor;
  • signature by assignee.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee.

• Legal verification of a written assignment document of an application is not required.

• Legal verification of a written assignment document of a registration is not required.

• An assignment of an application must be recorded to be effective.

• An assignment of a registration must be recorded to be effective.

B. Licensing

• Use of a mark that is the subject of an application can be licensed.

The license agreement shall state that it's a pending application but shall end if the trademark application is denied.

• Use of a registered mark can be licensed.

• In this jurisdiction, recordation of a registered trademark user (as opposed to recordation of a licensee) is the sole means of registering the rights of another to use the mark.

• A license of an application can be made for a portion of the territory covered by the application.

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration

 provided that the license agreement is a private agreement and division of an application/registration is allowed within the same class.

• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed.

Recordation of a license agreement is not mandatory in Colombia in order for it to be valid with regard to industrial property matters; however, the license agreement shall be recorded before the Ministry of Commerce, Industry and Tourism in order to be valid for payments of royalties based on IP licensing.

• Use by a related company of a registered mark need not be licensed.

 Recordation of a license agreement is not mandatory, regardless of whether use is made by a related company of the owner.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • if the license has no limitation of time, a statement so indicating

(A license agreement can be with or without term. If it is made without term, or with an endless term, the license agreement will be terminated along with the trademark unless it is renewed. If it is made without a time limitation, the consent of both the licensor and the licensee will be required in order to terminate the license and to "un-record" it.);

• territory of the license

(If no territory is stated, it would be understood that it is for the whole jurisdiction.);

• signature by licensor;
• signature by licensee;
• express permission to sublicense, if appropriate.

• A license document for a registration requires:
  • name of licensor;
  • name of licensee;
  • details of the trademark to be licensed;
  • commencement date of the license;
  • term of the license

(If no such provision is included, the term is understood to be for the same time as the trademark registration; if the trademark is renewed, the license agreement could be understood to still be in force.);

• territory of the license;
• simple signature by licensor (see below for execution requirements);
• simple signature by licensee (see below for execution requirements).

• Legal verification of a written agreement to license an application is not required.

• A license of an application must be recorded to legitimately control use by and obtain royalties from the licensee.

Recordation of a license agreement is not mandatory in Colombia in order for it to be considered as valid with regard to industrial property matters; however, the license agreement shall be recorded before the Ministry of Commerce, Industry and Tourism in order to be valid for payments of royalties based on IP licensing.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• A license of a registration must be recorded to legitimately control use by and obtain royalties from the licensee.

 Although the IP laws provide that it is not necessary, the tax and exchange laws state that the license agreement shall be recorded.

• The license for a renewed registration need not be re-recorded

if the license has no time limitation.

• Legal verification of a written agreement to license a registration is not required.

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • power of attorney, without further formalities;
  • deed of assignment, without further formalities;
  • certificate of proof of change of name, without further formalities;
  • certificate of merger, without further formalities.
  •  No power of attorney is needed if it is the same attorney; if it is a new attorney, then the Colombian PTO may ask for it. Either a scanned copy or a PDF can be sent by email.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

any kind of evidence that shows the new address, e.g., commercial or corporate certificates, public deed if needed.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 deed of liens with no further formalities.

VI. Registration

A. Requirements

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  •  It depends on the grounds for challenging the validity and if it has been opposed or not. The statute of limitation varies. If the ground to contest the validity of the trademark registration is bad faith, then it could be claimed at any time.

• The territorial limit of registration is:

Colombia.

C. Term

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  •  If the trademark application is made using the local system, the ten-year term will begin as from the registration date; if the trademark application is made using the Madrid Protocol and if the trademark is granted, the 10-year term will begin as from the International Registration date, which is before the granting date of the Colombian PTO.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 it alerts customers and competitors that it is a protected brand.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • ®;
  •  Marca Registrada.

• The use of ® is not legally recognized, but it is recognized in practice.

• The legal consequences of false or misleading marking are:

It could be used as evidence of bad faith in a particular case.

VII. Post-Registration

A. Use Requirements

 Only after the third year from the registration date may a non-use cancellation action be filed. The owner shall submit evidence of use during the past three years after the non-use cancellation action is filed to overcome it unless force majeure can be pledged.

• To satisfy the use requirement, the amount of use:
  • must be on a commercial scale.

The Andean Court of Justice recently held that despite having to submit evidence of use on a commercial scale, trademark owners are allowed to fail, and such failure cannot be punished with a trademark cancellation; therefore, it must be studied case by case.

• Use of the trademark must occur in:
  • any member state of the Andean Community.

 Use should be proven by appropriate sales invoices for the goods/services within a particular domestic market or for export.

• The consequences of a trademark's not being used are as follows:

It could be canceled if the registration is subject to an attack grounded on non-use.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  • any interested third party;
  •  anyone. Trademark owners have the obligation to use their trademark in connection with the goods/services protected, and therefore the non-use cancellation action applicant is not forced to demonstrate any interest.

• Non-use can be excused under the following circumstances:
  • import restrictions;
  • other government policies;
  •  force majeure.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:
  • filed an action for cancellation of the trademark on the ground of non-use.

The condition is that the trademark owner must have used the trademark during the past three years, which means that, e.g., if a trademark registration was obtained eight years ago and the owner has used it during only the last four years, the non-use in the first four years doesn't matter. Resumption of use during the three-year period prior to the cancellation action being filed is enough to overcome non-use. Such use within the three years prior to the filing date of the non-use cancellation action can be for the whole three years or less. The Andean Court of Justice has ruled that six months is enough.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

• Cancellation is available.

For the purpose of this chapter:

1. If cancellation is understood as the possibility of a trademark registration that is duly granted, having no appeals opportunities, and that could be canceled before the Colombian PTO, then besides the cancellation action due to non-use, there are two more cancellation actions that could be filed before the Colombian PTO:

• an action based on vulgarization that proceeds against any trademark that has become a generic term for certain types of products and for which its owner has done nothing or not enough to prevent it from happening; and
• an action based on notoriety, which means that the owner of a notorious trademark that is already registered in Colombia for a third party could file a cancellation action claiming that its trademark is notorious in Colombia since the application date of the trademark.

Besides the above, in rare instances the Colombian PTO may revoke its own decisions.

2. If cancellation is understood as the possibility to attack the registration in a nullity action to pursue its invalidity, then one must file a claim before the Administrative Courts in a two-instance proceeding (since January 2023): the first instance before the Administrative Tribunal of Bogotá and the second instance in appeal before the Council of State. Formerly, it was a unique instance proceeding before the Council of State. This nullity action trial could take five or more years to be finally resolved.

The following answers are related to these nullity actions.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional

(This could be argued if the trademark consists of a term or general description that could be used by the competitors in their own markets);

• breach of copyright

(It is recommended to have the copyright registered before the Colombian Copyrights Authorities.);

• rights under Article 6bis of the Paris Convention (notorious or well-known mark)

(The notorious declaration should be issued by the Colombian PTO while an opposition or cancellation action based on non-use or vulgarization is decided.);

• rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
• rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark)

(when a trademark registration is obtained in bad faith);

• rights under Article 8 of the Paris Convention (trade names);
• registered design rights;
• rights in a personal name;
• the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
• the mark consists of a geographical indication;
• the mark is against public policy or principles of morality;
• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention

(against the trademark registration that has been obtained to perform unfair competition acts);

• the mark includes a badge or emblem of particular public interest;
• the mark is used in a misleading manner;
• the application for or registration of the mark was made in bad faith;
•  it breaches any other IP treaty, such as the Washington Convention, 1929; TRIPS; or any other protected under Free Trade Agreements or related treaties.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is:

The statute of limitations regarding the nullity action states that depending on the grounds of the action, the deadline to file the claim could be four months, five years, or no deadline in bad-faith cases.

• The following parties may bring a cancellation action:
  • any interested party;
  • the owner of an earlier right;
  • a licensee;
  •  anyone, depending on the grounds of cancellation.

• Cancellation actions cannot be filed online.

Cancellation actions that are understood to be cancellations due to non-use, notoriety, or vulgarization shall be filed before the Colombian PTO and online. Cancellation actions understood to be nullity actions that aim to procure the invalidation of a trademark registration should be filed with the Administrative Courts in a double-instance proceeding and can also be filed online.

C. Renewal

• The following documentation is required for renewal:
  • power of attorney

(No need of power of attorney, but the Colombia PTO may ask for it. If renewed by someone different from the owner or if the owner is not domiciled in Colombia, then the renewal should be done by an attorney at law. The power of attorney could be granted just by signing it and sending it by email.);

•  filing the renewal along with payment of governmental fees.

• The first renewal date of a registration is:
  • 10 years from the registration grant date.

This applies to domestic trademark registrations; trademark registrations coming from Madrid Protocol designations shall be renewed ten years after the application is made.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

 six.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

 Governmental fees are higher than those applicable within the regular renewal period.

• The penalty for late renewal is:
  •  No late renewal is allowed after the grace period; once elapsed, the trademark registration is void.

• Renewal can be effected online at the following URL:

 www.sic.gov.co but only for local trademark owners; nonresident trademark owners must renew through a resident attorney at law in Colombia.

• At the completion of renewal, a new registration number is not issued.

If you would like to know the trademark registration process of Costa Rica ? Click on here!

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