IVÁN GIOVANNI NATERA MELOMAY 2013HOW TO REGISTER A TRADEMARK IN COLOMBIAAbstractThis article explains to the general publi...
General information about trademarksWhat is the intellectual property?The intellectual property (IP) is a legal concept re...
an intangible asset that can reach a value even higher than the physical assets ofa company (Intellectual Property Office,...
former identifies the individual or company, while the latter distinguishes the goodor service.Examples of trade names are...
that resulted from the Diplomatic Conference held in 1957 in Nice, France. It iscurrently used by approximately 148 countr...
A) By the type of sign:1) Nominal trademark: It is a sign that consists in more than one letter, word,number, phrase or co...
Source: www.apple.com4) Tridimensional trademark: Consists of a particular shape that can distinguishone product from othe...
5) Sound trademark: The goods or services are identified by a particular soundthat is represented graphically in a pentagr...
Source: industriaslicorerasdeguatemala.com/rones-de-guatemala3) Certification trademarks: The main characteristic of certi...
Examples: Alpina, Ramo.Source: www.alpina.com.co2) Notorious trademark: It is a trademark that is known by an important pa...
public, while the notorious trademark is only known by a particular group ofconsumers. As well as the notorious trademark,...
What cannot be registered as a trademark?The Andean Community of Nations’ Decision 486, 2000 includes severalrestrictions ...
Which is the trademarks office in Colombia?The trademarks office in Colombia is the “Superintendencia de Industria yComerc...
ncion=signosDistintivos) or can be made by the trademarks office for an additionalcost in a no biding report.d) Fill the f...
3) Form examination: The SIC will verify if the form has been filled properly and ifthe attached documents are complete an...
(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2008).What is the cost of regist...
2) Indirect use: The owner can also sign agreements authorizing another party touse the trademark. This is made by means o...
1) Opposition: As was explained in the registration process, the opposition is theopportunity that a person has to prevent...
REFERENCES:Alpina Colombia. Retrieved May 30, 2013 from www.alpina.com.coAmerican International Group. Retrieved May 30, 2...
Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio. Resolución 173 de 2013.Nice Agree...
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How to register a trademark in colombia Nisimblat Law Offices Bogota Colombia

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This article explain how to register a trademark in Colombia. It begins explaining what is intellectual property, what is a trademark, what type of trademarks there are, what can be and what can not be registered as a trademark, which is the process, which are the legal proceedings, and what rights are derived form the registration.
Giovanni Natera
Director
Intellectual Property Division
Nisimblat Law Offices
www.nisimblatabogados.com
info@nisimblatgroup.com
Tel. 5716917862-2363018

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How to register a trademark in colombia Nisimblat Law Offices Bogota Colombia

  1. 1. IVÁN GIOVANNI NATERA MELOMAY 2013HOW TO REGISTER A TRADEMARK IN COLOMBIAAbstractThis article explains to the general public how to register a trademark in Colombia.It starts by clarifying several concepts as intellectual property, trademark, legalname, trade name, goods, services and classes, in order to be able to classify thetypes of trademarks and tell the reader what signs can be registered as atrademark and what others cannot.Then, the article shows the steps that must be followed for registering a trademarkin Colombia, identifies the rights derived from the registration and explains thepossible claims and judicial actions related to trademarks.As there is no a thesis that must be defended with several arguments, this text isnot written as an essay. On the contrary, it is written in a guide form and in afriendly manner to be easily understood by non-lawyers, using a question-answermethod and full of examples and images for this purpose, but including some levelof detail. For writing it, there were used the highest and most reputed referenceson the subject, such as the Colombian trademarks office (Superintendencia deIndustria y Comercio) and the World Intellectual Property Organization (WIPO),among others respectable sources.
  2. 2. General information about trademarksWhat is the intellectual property?The intellectual property (IP) is a legal concept referring to creations of the mindthat can be recognized with exclusive rights. It is divided in two big categories: theindustrial property, that includes inventions (patents), trademarks, industrialdesigns, and geographical indications of the source, that must have an industrialapplication; and Copyright, which encompass artistic and literary creations as films,drawings, plays, musical works, paintings, sculptures, architectural designs, novelsand poems (WIPO, what is intellectual property?; Superintendencia de Industria yComercio).What is a trademark?A trademark is a distinctive sign used to identify goods or services in the market ascoming from a particular source, which can be an individual, an enterprise or anyother legal entity. They are used to claim rights of use and properties of goods andservices. The main characteristic a trademark must have to be registered is thedistinctiveness, which implies that the sign has the ability to distinguish the goodsof services from those provided or produced by other individuals or companies. It is
  3. 3. an intangible asset that can reach a value even higher than the physical assets ofa company (Intellectual Property Office, 2013).What is the difference between a trademark and other types of protection?There are some concepts related to trademarks that use to generate confusion,and it is important to clarify them all.The company name or legal name is the name of the entity owing a business. Inthe case of corporations, the legal name will often have an ending depending onthe type of company, such as Ltda, SA or SAS. This name must be used in officialmatters such as filling tax returns, buying properties or signing agreements.Examples of legal names are Ecopetrol SA, Grupo Modelo SAB de CV.The trade name, trading name or business name, is the name a business usesfor sales and advertising purposes, and may be the same as the legal name, butmay not contain the legal ending such as Ltda or SA. It is the name often seen bythe general public on signs or internet. An individual or company can have severaltrade names to identify different business activities, but the registration of abusiness (obtaining a legal name) does not imply the right over the trade name,which is obtained only by the continuous use of it in trade activities. A trade namecan also be a trademark, but the trade name is not by itself a form if intellectualproperty. The main difference between a trade name and a trademark is that the
  4. 4. former identifies the individual or company, while the latter distinguishes the goodor service.Examples of trade names are Kodak for the company whose legal name isEastman Kodak Company, Bayer for the company whose legal name is Bayer AGand Coca-Cola for the company whose legal name is The Coca-Cola Company(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2008; Gallegher & Dawsey, 2010).What is a good and what is a service?A good is anything that can be made for consuming and investment, and can beoffered in the market to satisfy a want or a need. On the other hand, a service isan intangible and identifiable activity that can be offered and is the main object of acommercial transaction aimed to satisfy a want or a need. For trademark purposes,goods and services are classified in classes (Ministerio de Comercio, Industria yTurismo and Superintendencia de Industria y Comercio, 2008).What is a class of goods and services?A class is a term used to identify a group of related goods or services that can beoffered in the market. They are grouped in 45 different classes (34 for goods and11 for services) according to the “Nice Agreement Concerning the InternationalClassification of Goods and Services for the Purposes of the registration of marks”
  5. 5. that resulted from the Diplomatic Conference held in 1957 in Nice, France. It iscurrently used by approximately 148 countries, including Colombia, where theAgreement was adopted by the article 151 of Andean Community of Nations’Decision 486, 2000.For example, class 33 (goods) encompass alcoholic beverages, except beers, andunder class 36 (services) are classified insurance, financial, monetary and realestate affairs.Source: www.sodahead.com Source: www.aig.com.co(World Intellectual Property Organization; Ministerio de Comercio, Industria yTurismo and Superintendencia de Industria y Comercio, 2008; Nice AgreementConcerning the International Classification of Goods and Services for the Purposesof the registration of marks, 1957).What types of trademarks exist?Trademarks are classified in three different categories, by the type of sign, by thefunction of the sign and by the use and diffusion.
  6. 6. A) By the type of sign:1) Nominal trademark: It is a sign that consists in more than one letter, word,number, phrase or combinations that can be read and pronounced.Example: The word “Apple”.2) Figurative trademark: Is a sign made up by an image, and can include or not aconcept related to it.Example: The shape of the bitten apple.Source: www.apple.com3) Mixt trademark or semi-figurative trademark: Combines one or more nominalelements with one or more figurative elements.Example: The bitten apple with the word “Apple”
  7. 7. Source: www.apple.com4) Tridimensional trademark: Consists of a particular shape that can distinguishone product from others.Example: The particular shape of the Coca-Cola bottle.Source: (Ministerio de Comercio, Industria yTurismo and Superintendencia de Industria y Comercio, 2008).
  8. 8. 5) Sound trademark: The goods or services are identified by a particular soundthat is represented graphically in a pentagram or a sonogram.Example: McDonald’s Corporation’s 5-note “I’m lovin’ it” jingle.Source: http://www.youtube.com/watch?v=eBlD2N_AwgIB) By the function of the sign:1) Commercial trademark: These are the most common type of signs, and are theones who identify goods or services from a specific individual or company in themarket.Examples: Apple, Coca-Cola, Alpina.Source: www.alpina.com.co2) Collective trademark: They are owned by organizations (such as corporations,institutions or collectivities) and identify goods and services with different businessorigin but that share common characteristics, such as the materials, the way ofproduction or the level of quality. The main feature of this type of trademarks is thatit is used as an indication that some goods or services are provided from amember of the owner organization.Examples: Rones de Guatemala.
  9. 9. Source: industriaslicorerasdeguatemala.com/rones-de-guatemala3) Certification trademarks: The main characteristic of certification trademarks isthat it is not used by the owner but by the authorized users for guaranteeing to thegeneral public that the distinguished goods and services have particularcharacteristics and qualities.Examples: Icontec, Sello Ambiental Colombiano.Source: www.icontec.org.coC) By the use and diffusion:1) Common trademark: They refer to a particular class of goods or servicesaccording to the International Classification of Nice, and are known among thepublic to which they are directed.
  10. 10. Examples: Alpina, Ramo.Source: www.alpina.com.co2) Notorious trademark: It is a trademark that is known by an important part of thepublic that consumes a particular group of goods or services. It has a widerprotection than a common trademark, reaching products and services notprotected specifically by the trademark, breaking the specialty principle. Theprotection of a notorious trademark can pass international borders. Anotherimportant effect is the stricter analysis of the likelihood of confusion that has to bedone to every registration application.Examples: Nike (for sports goods and services consumers), vogue (for cosmeticconsumers).Source: www.nike.com3) Renowned trademarks: It is an extension of the concept of notorioustrademark, due to the higher knowledge of the renowned trademark for the general
  11. 11. public, while the notorious trademark is only known by a particular group ofconsumers. As well as the notorious trademark, a renowned trademark implies astricter likelihood confusion analysis of similar registration applications.Example: Coca-Cola (probably the best example of a worldwide known trademark).Source: www.coca-cola.com.co(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2008).What can be registered as a trademark?A trademark can consist of words, numbers, letters, drawings, images, forms,colors, figures, logotypes, symbols, graphics, monograms, sounds, smells orcombinations of these elements, and any other sign that can be representedgraphically (Ministerio de Comercio, Industria y Turismo and Superintendencia deIndustria y Comercio, 2008).
  12. 12. What cannot be registered as a trademark?The Andean Community of Nations’ Decision 486, 2000 includes severalrestrictions for signs to be registered as a trademark, and that can be classified asfollows:1) Lack of distinctiveness.2) Descriptiveness. For example, if a producer of beer wants to register thetrademark “BEER”, it would be refused.3) Reproduction of common or natural shapes, consists of generic or technicalnames of the goods or services, common colors, etc.4) Contrary to the law, the moral or the public order. For example, if a figurativetrademark consists on explicit sexual images, it must be refused.5) Identical or very similar to a registered trademark or to a sign in process ofregistration, if it aims to distinguish the same goods or services, or related ones.6) Is identical or very similar to a notorious trademark, even if it aims to identifyother type of goods or services.(Intellectual Property Office, 2013; Decision 486, 2000 Andean Community ofNations).
  13. 13. Which is the trademarks office in Colombia?The trademarks office in Colombia is the “Superintendencia de Industria yComercio”, commonly known as SIC. It is also the official entity that controls therest of the Industrial Property registration and rights, as patents and industrialdesigns, and the competence and consumer law. It has its principal office inBogotá.Which is the process to register a trademarkin Colombia?There are several steps that must be followed carefully in order to register atrademark in Colombia and be successful.1) Previous steps: Before making the application, it is important toa) Choose the distinctive sign, regarding the information given above about whatcan and cannot be registered as a trademark.b) Identify the class of goods or services the trademark aims to identify, accordingto the International Classification.c) Look for identical or similar signs. This can be done online in this link(http://sipi.sic.gov.co/loader.php?lServicio=SignosDistintivos&lTipo=consultas&lFu
  14. 14. ncion=signosDistintivos) or can be made by the trademarks office for an additionalcost in a no biding report.d) Fill the form, that can be obtained for free in the customer service office of theSIC or in its website (www.sic.gov.co). This form must be filled with the followinginformation:- The type of distinctive sign: Commercial trademark, collective trademark, etc.- The applicant’s information: Name, identification (for an individual or a company),address.- Legal representative.- The sign pretended to register and its type (nominal, figurative, etc).- Class of goods or services aimed to be identified by the trademark.- Payment voucher for the corresponding cost.- Proof of legal existence (in the case of companies).- Power of attorney.2) Apply: An application date and serial number is allocated; the former will permitthe applicant to verify online the process.The application date is important due to the preference of earlier applications incase of similar trademarks.
  15. 15. 3) Form examination: The SIC will verify if the form has been filled properly and ifthe attached documents are complete and correct. In case there is a mistake, theSIC will give a 60 day period to the applicant to complete or correct the applicationform.4) Publication: If the application form fulfills the requirements, it is published forone time in the Intellectual Property Gazette containing the main information aboutthe sign and the applicant.5) Opposition: Any party who believes it may be damaged by the registration ofthe trademark must present opposition during the next 30 days following thePublication, filling a special form for that purpose.This SIC will make a form examination of the opposition, and if it is admitted, willgive 30 additional days to the applicant to be able to defend himself.6) Examination: No matter if there are oppositions or not, the SIC will make acomplete examination to determine if the sign can be registered as a trademark.There can be two possible decisions: approval or refusal. In the first case, the SICwill issue a registration certificate.Any party that does not agree with either decision has a period of 5 days to presentthe motion of reversal addressed to the Distinctive Signs Division’s Chief and ofappeal to the Delegated Superintendent for Industrial Property. These twoconsecutive actions are known as “Vía Gubernativa” in the Civil Law countries,where exist a jurisdiction called “Jurisdicción Contencioso Administrativa” thattakes part in every judicial process in which the State is a party.
  16. 16. (Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2008).What is the cost of registering a trademark in Colombia?The costs for the application for the registration of a trademark in Colombia for thecurrent year (2013) are the following:- COP$750 000 for registering a trademark of products and services in one class.- COP$1’000 000 for registering a collective or certification trademark.Other related costs can be consulted in the cited resolution, which is updatedyearly.(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2013).Which rights are derived from the trademark registration?The rights over the registration have a protection in the Colombian territory, andare the following:1) Right to use: The owner of the registered trademark can introduce,commercialize, import, export, transport and sell the goods or services identified bythe trademark.
  17. 17. 2) Indirect use: The owner can also sign agreements authorizing another party touse the trademark. This is made by means of a user license that has two options:a) Exclusive license.b) Non-exclusive license.3) Disposal rights: The owner of a trademark can sell it to a third party.4) Prohibition rights: The owner of a trademark can prevent someone else to useit in a wrongful way.(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2008).Which is the lifetime of those rights?The conceded registration has a lifetime of ten (10) years counting from the datethe certificate was conceded. It can be renewed indefinitely forsuccessive periods of ten years (Ministerio de Comercio, Industria y Turismo andSuperintendencia de Industria y Comercio, 2008).Which are the legal proceedings?The owner of a trademark may commence legal proceedings against a party thathas presumably infringed the rights derived from a trademark registration.
  18. 18. 1) Opposition: As was explained in the registration process, the opposition is theopportunity that a person has to prevent the registration of a trademark. It can bepresented by the owner of a similar trademark or by any other person in case thesign is contrary to law.2) Cancel of registration: It is a proceeding directed to terminate the rights ofregistration and can be initiated by any person when without justified reason thetrademark has not been used in at least one of the members of the AndeanCommunity of Nations.3) Only the owner of a trademark can initiate judicial actions if someone else hasinfringed his rights. The judge having jurisdiction is the civil circuit court of thecity where the respondent has its domicile.4) Annulment of an administrative act: The annulment of an administrative actcan be requested to the Consejo de Estado having previously used the VíaGubernativa (an institution and a proceeding owned by the Civil Law system).(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio, 2008).
  19. 19. REFERENCES:Alpina Colombia. Retrieved May 30, 2013 from www.alpina.com.coAmerican International Group. Retrieved May 30, 2013 from www.aig.comAndean Community of Nations. Decision 486, 2000.Apple. Retrieved May 30, 2013 from www.apple.comCoca-Cola Colombia. Retrieved May 30, 2013 from www.coca-cola.com.coGallegher & Dawsey (2010). Understanding trademarks. Key differences betweenlegal names, trade names and trademarks. Retrieved May 29, 2013 fromhttp://www.invention-protection.com/ip/publications/docs/Legal_Name_Trade_Name_Trademark.htmlIndustrias Licoreras de Guatemala. Retrieved May 30, 2013 fromindustriaslicorerasdeguatemala.com/rones-de-guatemalaInstituto Colombiano de Normas Técnicas y Certificación. Retrieved May 30, 2013from www.icontec.org.coIntellectual Property Office (2013). What is a trademark (or brand)? Retrieved May29, 2013 from http://www.ipo.gov.uk/types/tm/t-about/t-whatis.htmMinisterio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio (2008). Marcas.
  20. 20. Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria yComercio. Resolución 173 de 2013.Nice Agreement Concerning the International Classification of Goods and Servicesfor the Purposes of the registration of marks (1957). Retrieved May 29, 2013fromhttp://www.wipo.int/export/sites/www/treaties/en/classification/nice/pdf/trtdocs_wo019.pdfNike. Retrieved May 30, 2013 from www.nike.comSoda Head. Retrieved May 30, 2013 from www.sodahead.comSuperintendencia de Industria y Comercio. Marcas. Retrieved May 29, 2013 fromhttp://www.sic.gov.co/es/marcasWorld Intellectual Property Organization (WIPO). What is intellectual property?Retrieved May. 29, 2013 from http://www.wipo.int/about-ip/en/World Intellectual Property Organization (WIPO). Trademarks. Retrieved May. 29,2013 from http://www.wipo.int/trademarks/en/trademarks.html

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