Colombia Trademark Registration Q&A

Colombia Trademark Registration Q&A

Who can file a trademark registration application in Colombia?

• Any interested party (individuals and legal entities) from Colombia or abroad can file an application for trademark registration with the Colombian Trademark Office (CTO).

What can be protected and registered as a trademark in Colombia?

• According to Article 134 of Andean Decision No. 486, the following signs may be registered as trademarks:
  • Text or text combined with images
  • pictures, graphics, symbols, graphic elements, logos, monograms, likenesses, labels and emblems
  • Sounds and smells
  • Letters and numbers
  • Color: The color within the outline or a combination of several colors
  • The shape, packaging or packaging of the product
  • Any combination of the above symbols or elements
  • It is also possible to register collective and certification marks in Colombia. Legally established associations of producers, manufacturers, service providers, organizations or groups of individuals may apply for registration of a collective mark.

What cannot be protected and registered as a trademark in Colombia?

• Pursuant to article 135 of Andean Decision 486, the following signs may not be registered in Colombia:
  • Descriptive signs
  • Common forms with functional or technical advantages
  • Signs describing the quantity, quality, origin, value or other characteristics of goods or services consisting only of general expressions
  • Symbols consisting only of common expressions
  • Individual colors without specific shapes
  • Labels that are misleading about the origin, nature, manufacturing process, etc. of goods or services
  • Mark indicating the country of origin
  • Signs containing indications of origin that may cause confusion as to the goods or services identified
  • Including national emblems
  • Imitating the logo of relevant technical standards
  • Marks that include or resemble protected species
  • Signs that violate laws, morals, public order and good customs

Can trademark rights be established without registration?

• While there is no direct legal protection for unregistered marks, Article 135 of Andean Decision No. 486 provides protection for marks that were initially descriptive but later acquired distinctiveness and became trademarks. To obtain this status, the applicant must prove through strong evidence that the mark has distinctiveness.
• The owner of a well-known trademark who is a victim of unfair competition may take action under the Colombian Unfair Competition Law. Use is the basis of ownership and protection of commercial signs and trade names in Colombia.

Are well-known foreign trademarks protected even if they are not used domestically? If so, must the foreign trademark be well-known domestically? What proof is required? What protection is provided?

• Foreign trademark registrations are not recognized in Colombia unless the trademark is well-known. Even if the well-known trademark is not registered in Colombia, its trademark owner can file an opposition against any third party who attempts to register an identical or confusingly similar trademark and enjoy special protection. Well-known trademarks are also specially protected in non-use cancellation proceedings filed against them, and the well-known trademark owner can submit evidence of its well-known status as the basis for its defense.
• Holders of trademarks registered in any other Andean Community member country (i.e. Ecuador, Bolivia or Peru) may oppose a trademark application in Colombia based on their prior rights.

What are the benefits of registering a trademark?

• Trademark owners will also be granted the following rights:
  • Using trademarks as intangible assets
  • Assignment and licensing of trademarks
  • Objection on the grounds of likelihood of confusion
  • Obtain border and customs protection for your trademark
  • Filing a trademark infringement lawsuit
  • Filing criminal notices against infringers
  • Under Presidential Decree No. 2264 of 2014, the owner of a registered trademark must prove damages. Therefore, the trademark owner can apply for statutory damages. The amount of damages for each infringing registration is approximately between COP3 million and COP100 million. For infringements of well-known trademarks and uses that may cause other risks, the damages can be increased to approximately COP200 million.

What documents are required to file a trademark application? What are the rules for the representation of trademarks in applications? Are electronic filings available? Are trademark searches available or must they be conducted before filing? If so, what are the procedures and fees?

• A trademark application must include the following information and documents:
  • CTO trademark registration request, including:
  • Name, address, nationality or domicile of the applicant
  • Protected logo sign
  • Marker Type
  • Description of goods and services and the Nice Classification of goods and services
  • A copy of a trademark, such as a word mark with figurative elements, shapes or colors; a logo: a symbolic or design mark; a color mark: a composite or three-dimensional mark with or without color; or a color statement if the label is in color (if not in color, it must be provided in black and white);
  • A power of attorney signed by the applicant, a scanned copy will suffice
  • Proof of payment of government fees
  • Priority document and its Spanish translation
• The main rules for trademark representation in Colombia are as follows:
  • The standard typographical characters used by the CTO for registration and issuance of special marks are Arial, Arial Narrow and Times New Roman
  • When the mark includes figurative elements (i.e. a mark with a design), the application must include a copy of the mark in color (if color is requested) or black and white in .jpeg format (maximum size 450 × 450 pixels and 2M)
  • When an applicant for a combination, figurative, industrial design or three-dimensional sign wishes to claim protection for the colour of the label, he must use the colour code system (i.e. indicate the corresponding Pantone colour number) or name the colour without an adjective and declare and indicate the colour or colours to be protected.
  • For a three-dimensional mark, the reproduction of the mark must include a two-dimensional graphic or photographic reproduction, provided that it adequately shows the details of the mark. It must be provided in .jpeg format (maximum size 450 × 450 pixels and 2M). 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 mark.
  • When the trademark consists entirely or partially of non-Latin characters or non-Arabic or Roman numerals, the applicant must indicate whether the mark is a figurative mark or a word mark. If the applicant indicates that it is a word mark, the applicant must submit a transliteration or translation of the Latin characters or Arabic numerals.
• CTO encourages applicants to use electronic applications, and official fees for online trademark registrations can be reduced or exempted.
• An availability search can be conducted before filing a trademark registration for a fee of COP 27,500 per class and COP 15,500 for each additional class.

How long does it usually take to obtain a Colombian trademark registration and how much does it usually cost? When does the registration become official? What circumstances would increase the estimated time and cost of filing a trademark application and obtaining a registration?

• Under normal circumstances, trademark registration in Colombia usually takes 7-9 months; if there is an opposition, the procedure may take up to 18 months
• Trademark registration takes effect from the date the authorization decision is made
• The official fees for online trademark applications in Colombia are as follows:
  • Category 1: 1,219,000 Colombian pesos
  • Each additional category: COP 609,500
• Small and medium-sized enterprises can enjoy official fee reductions, while collective trademark registration fees will increase.
• The official trademark registration fee in Colombia increases every year. Once the application is granted for registration, no registration fee will be charged.
• A third-party opposition request may result in an increase in trademark registration fees, or a CTO refusal to register, which may lead to an appeal. There is no official fee for opposition, but attorney service fees will be incurred.

What classification system does Colombia use? Is it possible to have multiple classes under one label?

• Colombia follows the Nice Classification and also uses the Madrid Goods and Services Manager and TMclass as references for reviewing the description of goods and services.
• Colombia allows multiple classes of trademarks. The fee for each additional class is 50% of the fee for the first class.

What procedures does the Trademark Office follow when deciding whether to approve a registration? Does it examine the application for potential conflicts with other marks? Does it accept letters of consent to overcome objections based on third-party marks? Does the applicant need to respond to the Trademark Office's refusal?

• Formal review: CTO will conduct a formal review of the trademark registration. If corrections are required, the trademark registration applicant must respond within 60 working days. If all goes well, the trademark application will be published within 30 working days. Anyone can raise an objection during this period, and the applicant must respond to the objection within 30 working days.
• Substantive examination: The CTO will conduct a substantive examination of the trademark registration application to verify that there are no absolute grounds for refusal and that the trademark is unlikely to be confused with any prior trademark rights (relative grounds).
• The applicant for trademark registration needs to prove that the co-existing trademarks will not cause the possibility of confusion among consumers.
• A rejected trademark applicant must file a simple appeal with the CTO within 10 working days of receiving the trademark decision notification. The decision is deemed to have been received one month after the email notifying the applicant is sent.

Must use of a trademark or service mark be filed prior to registration? Must proof of use be filed? Are foreign registrations granted priority? If a registration is granted without use, is there a time by which use must begin, either to maintain the registration or to defeat a third-party challenge on the grounds of non-use?

• No declaration or proof of use is required before registration or after the designated period. Colombia applies the Paris Convention, and applicants enjoy priority rights over any other contracting party for the same trademark application six months after filing their application.
• A trademark will be revoked after three years of non-use. Although it is not necessary to claim or prove use after the above period, the trademark owner must prove use of the trademark in order to defend itself against a trademark cancellation case. A third party wishing to cancel a trademark must file a non-use trademark cancellation action with the CTO, and the trademark owner will have 60 working days to submit evidence of use.

How long is the registration valid?

• The trademark protection period in Colombia is 10 years from the date of the final decision on the grant. The renewal application can be filed within 6 months before the deadline or within the 6-month grace period after the deadline.

How to abandon a trademark registration?

• The right holder must clearly state the request to waive the right. A power of attorney must be submitted and certified by a notary public and stamped with the official seal.