Trade and Service Marks

– Colombian Trade Mark Law in Decision 486 of the Andean Community (Cartagena Agreement), in force since December 1, 2000.
– Circular Letter 10 of the Superintendence of Industry and Commerce of Colombia, published August 6, 2001.
– Resolution 21447 of April 11, 2012, which amended Titles X and XI of the Circular Letter of the Superintendence of Industry and Commerce of Colombia.
– Resolution 50720 of August 27, 2012, which amended Title X of the Circular Letter of the Superintendence of Industry and Commerce of Colombia.
– License agreements involving trademarks are also regulated by Decision 291 of the Andean Community, and Colombian Decree 259 of 1992 and 729 of 2012.
– Resolution 2671 of January 29, 2014, which amends and adds the Chapter I of Title X of the Circular Letter of Superintendence of Industry and Commerce of Colombia.
– Resolution 48348 of August 11, 2014, which amends Title XI of the Circular Letter of Superintendence of Industry and Commerce of Colombia.
– Resolution 59671 of September 25, 2020, which amends Title XI of the Circular Letter of Superintendence of Industry and Commerce of Colombia.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since May 4, 1980.
– WTO’s TRIPS Agreement, including trade in Counterfeit Goods, since April 30, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since September 3, 1996.
– Colombo-French Convention of 1901 on Industrial Property.
– The General Interamerican Convention on Trade Mark and Trade Name Protection, signed in Washington in 1929.
– Decisions 486 and 291 of the Andean Community (Cartagena Agreement).
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), party since January 30, 2001.
– The most favored nation clause is included in the following international conventions concluded by Colombia with France of 1892, Germany of 1892, Switzerland of 1908, Bolivia of 1911, Sweden of 1928, Denmark of 1929, Chile of 1936/1941, Hungary of 1939.
– The most favored nation clause is also granted to nationals of other countries, members of the Andean Community, of the World Trade Organization and of the Paris Convention for the Protection of Industrial Property.
– Trademark Law Treaty, since April 13, 2012.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since August 29, 2012.

Filing

Kinds of marks: the following kinds of signs are covered by Colombian laws: (1) trademarks; (2) service marks; (3) collective marks; (4) slogans; (5) commercial names; (6) certification marks; (7) trade emblems.

Excluded from registration: those signs which: (1) lack distinctiveness; (2) consist exclusively in forms that are usual to the products in relation to the goods, or to their containers, or in forms or characteristics imposed by the nature or the function of the product or of the related service; (3) consist exclusively in forms or other elements that provide a functional or technical advantage to the product or service to which they apply; (4) consist exclusively in a sign or indication that may serve in commerce to designate or to describe the quality, quantity, destination, value or place of origin, the time of production or other characteristic data or information about the products or services for which the sign or indication is to be used, including laudatory expressions referring to those products or services; (5) consist exclusively in a sign or indication constituting the generic or technical name of the product or service concerned; (6) consist exclusively or would have been converted into a common or usual designation of the related product or service in the current language or in the use of the country; (7) consist in a color regarded separately, not being delimited within a specific form; (8) may deceive trade circles or the public, particularly on the geographical origin, the nature, the mode of manufacturing, the characteristics, qualities or capacity for use of the related products or services; (9) reproduce or imitate or contain a denomination of origin protected for similar products or for different products, when their use may cause a risk of confusion or of association with the denomination; or when their utilization implies taking an unfair advantage of the characteristic of being well-known or famous; (10) contain a denomination of origin protected for wines and spirits; (11) consist in a geographical indication, national or foreign, capable of inducing to confusion with respect to the products or services to which they apply; (12) reproduce or imitate, without authorization from the competent authorities, whether as trademarks or as elements thereof, the armorial bearings, flags emblems, signs and official control and guaranty punches of the States and any imitation from the heraldry point of view, as well as coats of arms, flags and other emblems, abbreviations by initials, or denominations of any international organization; (13) reproduce or imitate signs used to indicate compliance with technical standards, unless their registration is applied for by the competent national entity for the control of technical standards and quality in the member countries; (14) reproduce, imitate or include the denomination of a plant variety protected in a member country or abroad, if the sign is for products or services concerning such variety or its utilization is likely to cause confusion or association with the variety; or (15) are contrary to law, morality, public order or good habits; (16) are identical to or so similar as to misleading the public with respect to a mark previously applied for registration, or registered by a third party for similar products or services in whose respect the use of the mark may mislead the public; (17) are identical or similar to a protected trade name, a label or ensign, provided that under the circumstances their utilization may cause the risk of confusion or of association; (18) are identical or so similar to a trade slogan applied for or registered, provided that under the circumstances, their utilization may cause the risk of confusion or of association; (19) are identical or similar to a distinctive sign of a third party, provided that under the circumstances their utilization may cause the risk of confusion or of association when the applicant is or has been a representative, a distributor or a person expressly authorized by the owner of the protected sign in the member country or abroad; (20) constitute a sign that may affect the identity or prestige of legal persons profit or non-profit operated, or individuals, especially when relating to name, surname, firm name, title, nickname, pseudonym, image, portrait or caricature of a person other than the applicant or identified by the relevant sector of the public as a person different from the applicant, unless accrediting the consent of such person or, if having died, the consent of whomever would have been declared heirs; (21) they consist in a sign infringing the industrial property right or copyright of a third party, unless under his/her express consent; (22) consist in the name of indigenous, Afro-American or local communities, or the denominations, words, letters, characters or signs utilized to distinguish their products, services or mode of processing them, or that constitute the expression of their cultures or practices, except when the application is filed by the relevant community or under its express consent; and (23) constitute a reproduction, imitation, translation, transliteration or transcription, total or partial, of a well-known distinctive sign, whose owner is a third party, whichever may be the products or services whereupon the sign applies, when its utilization may be liable to cause risk of confusion or of association with such third party, its/his/her products or services; an unfair utilization of the prestige of the sign; or the dilution of its distinctive strength or of its commercial or advertising value. Note: notwithstanding the provisions under items (1), (4), (5), (6) and (7), a sign may be registered as a trademark if the applicant for registration or his/her successor has been using it constantly in the member country and, by reason of such use, the sign has acquired distinctive character with respect to the products or services for which it is intended.

Priority: according to Paris Convention, priority can be claimed within six months from filing the first application.

Classification: International Classification as per the 11th Edition of the Nice Agreement.

Multi-class applications: are permitted.

Filing requirements for an application (to be sent to resident agent):
1. Application form signed by registered attorney or representative for industrial property matters;
2. Name and address of applicant and attorney or representative;
3. Reproduction of the mark, goods or services covered, and corresponding international class;
4. Power of attorney – grants faculties to represent the applicant in all intellectual property matters including trademarks, patents, copyrights and IP litigation. This document is also valid for subsequent applications, with same regulations as indicated in the patent section. Powers of attorney must contain faculty for representing the grantor in court and out of it and to appoint attorneys;
5. Certified copy of first application, when priority is claimed;
6. Receipt of payment of official fees.

Electronic filing: is available with 5% reduction of the filing fee.

Electronic signatures: digital and electronic signatures are accepted. Digital signatures must be certified by a national certifying agency (ONAC). Regarding electronic signatures, the Trademark Office shall assess in each case if the signature complies with the validity requirements established by the law.

Examination

Preliminary examination: as to the form.

Publication: the application is published in the Official Gazette for opposition purposes.

Official examination: after publication and decided together with oppositions.

Oppositions: must be filed at the Trademark Office within thirty working days from publication date and are decided at the time of granting or rejection; if opposition is rejected or there is no opposition, the registration is granted if the Trademark Office considers that the mark is registrable.

Letters of consent: as a general rule they are not accepted by the Trademark Office. Withdrawals of the application are accepted. 

Accelerated registration: it is possible to request an express registration, which would be issued in less than six months, subject to the fact that a third party claims a right of priority under the Paris Convention (Article 4) and Decision 486 (Article 9) of the Cartagena Agreement.

Protection

Legal effect: only registration grants property of the mark, the right to exclusively use it, and the actions for protection.

Duration of registration: ten years from date of grant, renewable for periods of ten years.

Term of renewal: application for renewal must be filed within six months before lapsing; the renewal term begins on the previous expiry date. However, there is a grace period of six months to renew it once the trademark has expired.

Exploitation of the mark: evidence of use of the trademark does not need to be proved in order to obtain renewal.

Licenses: licenses for the use of pending or registered trademarks may be granted; such license does not need to be registered at the Trademark Office in order to be effective against third parties and to avoid cancellation for non-use, but its registration before the Trademark Office can be used to evidence and prove the use of the mark by authorized third parties. License agreements must assure the quality of the products or services and control of same by the owner who is jointly responsible with the licensee for damages. Registration of license agreements between residents and non-residents should be filed at the National Tax and Customs Direction (DIAN) and registered at the Trademark Office. The license must be adjusted to the Common Regime of treatment to foreign capitals and trademarks, patents, licenses and royalties of Andean Community and the Colombian provisions on restrictive commercial practices of free competition.

Modification of Protection after Granting

Cancellation: can be instituted after three consecutive years of non-use in any of the Andean Pact Countries, from the date of the cancellation request.

Infringement: relief is granted by the courts in the form of an injunction with a bond to guarantee the discontinuance of the infringing acts; an embargo of the infringing goods and on its advertising, or on the prime materials used for the manufacture; or any other similar measure. Damages can be requested independently of the injunction.