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FAQs Distinctive Signs
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How are the distinctive signs divided?
According to the different forms of identifying products or services in the market, the distinctive signs have been divided into:
The protection procedures of these signs in Colombia are ruled by the Decision 486 of the Commission of the Andean Community (Comisión de la Comunidad Andina). It is the constituted applicable rule regarding Industrial Property Rights, not only in Colombia but also in Bolivia, Ecuador and Peru due to their condition of members of the mentioned Community.
What is a product or service trademark?
According to the article 134 of the Decision 486 of the Commission of the Andean Community (Comisión de la Comunidad Andina), a trademark is “any sign that is suitable to distinguish products or services in the market”. In addition to this, the mentioned article points out that “the signs susceptible of a graphic representation can be registered as trademarks”.
From the former, it can be said that every trademark has to fulfill the following characteristics:
This is how article 134 is declarative of the mentioned communitarian rule and points out what can be understood as a trademark:
The above mentioned signs lead to the existence of nominative, figurative, mixed, three-dimensional, sound and olfatory trademarks.
Why products or services trademarks are divided in classes?
Given that the nature of products and services trademarks refers precisely to identify these goods within the market, every trademark registration is circumscribed to a specific class according to the product or service and thus determining the market towards which the sign is targeted.
In order to establish to what class a trademark belongs, you must consult the International Classification of Products and Services Established in the Nice Arrangement. From classes 1 to 34 there is a wide range and the possible products of interest, and from classes 35 to 45 there are different type of services.
In Colombia, each trademark registration application must specify only one class of the international nomenclature.
Which trademarks cannot be registered?
There are absolute and relative grounds for trademarks not being considered for registration. The first ones involve general interests and they are unequivocally pointed out in article 135 of the Decision 486 of the Commission of the Andean Community (Comisión de la Comunidad Andina), while the second ones refer to interests of a particular nature, also mentioned in article 136 of the same community rule.
According to the Article 135, “The signs that cannot be registered as trademarks are the ones that:
“However, despite what is stated in literals b), e), f), g) y h), a sign may be registered as trademark if whoever applies for registration has been using it constantly in the Member Country and, because of this usage, the sign has acquired distinctive aptitude regarding the products or services to which it applies.”
About this last paragraph it is necessary to point out that it constitutes an exception to the mentioned motives, by which in virtue of the Theory of Acquired Distinctiveness, a sign that in itself was not distinctive, deserves protection due to the constant and effective way it has been used in the market. It must be known that registration applications for distinctive signs due to acquired distinctiveness demand a vast evidence material that supplies the necessary conviction to aim at the direct identification by the consumers as a trademark in the market.
According to the Article 136 “Those signs which are used in commerce and unduly affect a third party’s right, may not be registered as trademarks, especially when:
Which are the steps to follow to obtain a trademark registration?
According to our legislation, the only way to have effective right over a trademark is with the certificate of registration issued by the competent authority which, in the Colombian case, is the Superintendencia de Industria y Comercio (Superintendence of Industry and Commerce). The only way to have exclusiveness of a trademark is to follow these steps:
Is it compelling to carry out an availability trademark search?
Once it is exactly determined the trademark susceptible of protection and the specific products and services that it intends to protect, it is advisable to conduct an availability trademark search, from which it can be analyzed if the sign of interest would have any conflicts with previous registered signs in favor of third parties.
Even though this procedure is not compelling, it is advisable to carry it out in order to avoid that there might be registered and valid signs in favor of other rights-bearing subjects that would prevent the protection of the trademark of interest.
Which are the needed requirements for a trademark application for registration?
The requirements for a trademark application for registration refer to:
Is it possible to modify the application?
During any step of the procedure it is possible to modify the trademark application regarding the following aspects:
It is necessary to take into account that no substantial modification can be made about the composition of the sign applied for registration. Also, the products and services to be protected cannot be extended.
How much time does the form exam take?
Once a trademark application is filed, the trademark authority will have approximately two months to study if the application fulfills all the formal requirements and to order its publication in the Industrial Property Gazette.
If there is a formal requirement that has to be fulfilled, the competent authority will demand the applicant within the legal term to complete the legal formal requirements otherwise the application will be declared in state of abandonment.
Is it compelling the publication in the Industrial Property Gazette?
Yes, because this is the step that makes public the trademark application, for third parties to acknowledge the existence of the application and if consider pertinent, within the following 30 days of the publication date, file an opposition to the application for considering it harmful of any of the absolute or relative causes for non-registration of a trademark.
What happens if a third party opposes?
Once a third party opposes to a trademark application, the applicant is notified within the next 30 following days and has to file defense arguments. Then the file will be subject to a substantive examination in order to decide if the trademark can be registered or not.
How long does the substantive examination take?
Even though it is not possible to exactly determine how long it will take the trademark authority to decide about a trademark application, the approximate time varies between six and eight months. When the application has third party oppositions against, the procedure can take approximately eight months or more to reach a first instance decision.
Can the first instance decision be controverted?
Once the first instance decision is issued, the parties can interpose a reconsideration petition and subsequent appeal or directly an appeal. Each one of the decisions can take between six and eight months to be reached by the trademark authority.
What other legal resources exist to object the adopted decisions of the trademark office?
Once the legal resources are decided by the trademark authority the possibilities of objecting the decision of the Trademark Office are exhausted.
However, there is the possibility to turn to the maximum juridical instance in our country, the Council of State of Colombia, filing a nullity action to revoke the decisions adopted by the Trademark Office.
What happens when a trademark registration is granted?
Once a trademark is granted, for ten years from the date of the official decision that contains the registration, the trademark authority will issue a document by which the number of the register certificate is assigned, and it will be understood that the holder will have 10 years of exclusive rights over the sign, only for the products and services for which the protection was conceded.
What rights and obligations arise with a trademark registration?
Rights:
Obligations:
When can a trademark register be cancelled?
After three years since the date that a trademark register is granted, any third party can request its cancellation for non-use. At the same time, if within the legal term there is no suitable probative material of said use, the registration will be cancelled and the third party that claimed for this action, will have preferencial right to obtain the trademark registration.
Aside from a non-use cancellation action, a registration can be cancelled because of the trademark's vulgarization or the sign's notoriety in favor of a third party.
Can the owner of a trademark registration resign to it?
Yes. In fact, in any moment only the owner of the trademark registration directly or by a representative can resign to the trademark registration, paying the official fees set for this purpose.
What is a collective trademark?
Is the one associations and corporations apply for and regardless of identifying products and/or services from different businessmen, they have the purpose to accredit that those products and/or services have features in common.
The only difference in the procedure of these trademarks, related with those of products and services, is that they demand copy of the by-laws of the association that is applying for the sign protection, the precise list of its members and a management trademark protocol that indicates how is it going to be used.
What is a certification trademark?
Is the one that points out quality or other characteristics of the products and services to distinguish, and that precisely accredits the owner of the trademark. This registration procedure is the same as the one observed for trademarks of products and services.
What is a trade name?
It is the phrase or legend that complements a trademark. Therefore, always at the time of applying for the protection of a trade name, the trademark registration to which it is associated must be very clearly indicated.
The same procedure of trademark protection of products and services is applied to the trade names and its validity will be the same of the trademark that it complements.
What is a commercial name and an emblem?
Is the denomination that identifies a businessman within the ordinary course of his business. At the same time, the emblem is the way a commercial establishment is identified, and in both cases, different from the other distinctive signs, the rights are acquired by use.
Therefore, it is advisable to proceed with the emblems and commercial names deposit before the Trademark Office, when a presumptive date of use of the distinctive signs is constituted.
What is a denomination of origin?
Those are names of geographical places that indicate the origin of the product, and whose characteristics are unique and of high recognition, precisely by the geographic area from which these products come.
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According to the different forms of identifying products or services in the market, the distinctive signs have been divided into:
- Product or Service Trademarks.
- Collective Trademarks.
- Certification Trademarks.
- Trade Names.
- Commercial Names.
- Emblems.
- Denominations of Origin.
The protection procedures of these signs in Colombia are ruled by the Decision 486 of the Commission of the Andean Community (Comisión de la Comunidad Andina). It is the constituted applicable rule regarding Industrial Property Rights, not only in Colombia but also in Bolivia, Ecuador and Peru due to their condition of members of the mentioned Community.
What is a product or service trademark?
According to the article 134 of the Decision 486 of the Commission of the Andean Community (Comisión de la Comunidad Andina), a trademark is “any sign that is suitable to distinguish products or services in the market”. In addition to this, the mentioned article points out that “the signs susceptible of a graphic representation can be registered as trademarks”.
From the former, it can be said that every trademark has to fulfill the following characteristics:
- Perceptibility, which means that the sign can be “apprehended” in the market.
- Graphic representation, which indicates the possibility of describing the sign.
- Distinctiveness, the most important of all features because it supposes that the sign can be differentiated from the rest in the market.
This is how article 134 is declarative of the mentioned communitarian rule and points out what can be understood as a trademark:
- “The following signs can constitute trademarks, among others:
- Words or combination of words;
- Images, figures, symbols, graphics, monograms, portraits, labels, emblems and badges;
- Sounds and smells;
- Letters and numbers;
- A color delimited by a form or a color combination;
- The products form, their packaging or wrapping;
- Any combination of the signs or indicated media in the former sections.”
The above mentioned signs lead to the existence of nominative, figurative, mixed, three-dimensional, sound and olfatory trademarks.
Why products or services trademarks are divided in classes?
Given that the nature of products and services trademarks refers precisely to identify these goods within the market, every trademark registration is circumscribed to a specific class according to the product or service and thus determining the market towards which the sign is targeted.
In order to establish to what class a trademark belongs, you must consult the International Classification of Products and Services Established in the Nice Arrangement. From classes 1 to 34 there is a wide range and the possible products of interest, and from classes 35 to 45 there are different type of services.
In Colombia, each trademark registration application must specify only one class of the international nomenclature.
Which trademarks cannot be registered?
There are absolute and relative grounds for trademarks not being considered for registration. The first ones involve general interests and they are unequivocally pointed out in article 135 of the Decision 486 of the Commission of the Andean Community (Comisión de la Comunidad Andina), while the second ones refer to interests of a particular nature, also mentioned in article 136 of the same community rule.
According to the Article 135, “The signs that cannot be registered as trademarks are the ones that:
- Cannot constitute a trademark according to the first paragraph of the former article;
- Have no distinctiveness;
- Consist exclusively of usual forms of the products or their packaging or in forms or characteristics imposed by the nature or the function the product or the service is about;
- Consist exclusively of forms or other elements that give a technical or functional advantage to the product or the service to which they apply;
- Consist exclusively of a sign or indication that can be used in the market to describe the quality, quantity, destiny, value, geographic origin, production time or other data, characteristics or information of the products or services for which the sign or indication will be used, included the praiseful expressions referred to these products and services;
- Consist exclusively of a sign or indication that is the generic or technical name of the product or service;
- Consist exclusively or have been converted to a common or usual designation of the corresponding product or service in the common language or the country's usage;
- Consist in a color considered by itself, without being delimited by a specific form;
- Can deceive the commercial media or the public, in particular about geographic origin, the nature, manufacturing way, characteristics, qualities or aptitude for using the products and services;
- Reproduce, imitate or contain a protected Denomination of Origin for the same products or different products, when its use can risk confusion or association with the denomination; or implies an unfair use of its notoriety;
- Contain a protected Denomination of Origin for wine and spirituous drinks;
- Consist in a national or foreign geographical indication susceptible of inducing confusion regarding products or services to which they are applied;
- Reproduce or imitate, without permission of the competent authorities, either trademarks, elements of the said trademarks, coats of arms, flags, emblems, official control and guarantee signs and bradawls of States and every imitation from the heraldry point of view, as well as coats of arms, flags and other emblems, acronyms or denominations of any international organization;
- Reproduce or imitate signs conforming technical norms, unless their registry is requested by the competent national organism in norms and qualities of the Member Countries;
- Reproduce, imitate or include the denomination of a protected vegetal variety in a Member Country or abroad, if the sign is destined to products or services relative to that variety or its use could be susceptible of causing confusion or association with the variety, or
- They are contrary to law, morals, public order or good customs.”
“However, despite what is stated in literals b), e), f), g) y h), a sign may be registered as trademark if whoever applies for registration has been using it constantly in the Member Country and, because of this usage, the sign has acquired distinctive aptitude regarding the products or services to which it applies.”
About this last paragraph it is necessary to point out that it constitutes an exception to the mentioned motives, by which in virtue of the Theory of Acquired Distinctiveness, a sign that in itself was not distinctive, deserves protection due to the constant and effective way it has been used in the market. It must be known that registration applications for distinctive signs due to acquired distinctiveness demand a vast evidence material that supplies the necessary conviction to aim at the direct identification by the consumers as a trademark in the market.
According to the Article 136 “Those signs which are used in commerce and unduly affect a third party’s right, may not be registered as trademarks, especially when:
- They are identical or similar to a trademark previously applied for registration or registered by a third party, for the same products or services or for products or services for which the use of the trademarks may risk confusion or association;
- They are identical or similar to a protected commercial name or, if such is the case, to a name tag or emblem, whenever, given the circumstances, their use may originate risk of confusion or association;
- They are identical or similar to an applied or registered trade name, whenever, given the circumstances, their use may originate risk of confusion or association;
- They are identical or similar to a distinctive sign of a third party, whenever, given the circumstances, their use may originate risk of confusion or association, when the requesting party is or has been a representative, a distributor or a person expressively authorized by the owner of the protected sign in the Member Country or abroad;
- They consist of a sign that affects the identity or prestige of companies either with profit or non-profit motives, or individuals, especially when it is about name, last name, signature, title, diminutive, pseudonym, image, picture or caricature of a party different from the applicant or identified by the pertinent sector of the public as a different party from the applicant, unless the agreement of that party is demonstrated or, if deceased, the heirs’ authorization.
- They consist of a sign that infringes an industrial property right or the copyright of a third party, unless there is proof of agreement;
- They consist of the name of indigenous, Afro-American or local communities , or the denominations, words, letters, characters or signs used to distinguish their products, services or way of processing them, or that constitute a cultural experience or practice, unless the application is done by the same community or with their express agreement; and
- They constitute a reproduction, imitation, translation, transliteration or transcription, total or partial, of a notoriously known distinctive sign owned by a third party, whichever the products or services to which the sign is applied for, when their use is susceptible of risking confusion or association with that third party or with its products or services; an unfair profiting of the sign’s prestige; or the dilution of its distinctive strength or its commercial or publicity value”.
Which are the steps to follow to obtain a trademark registration?
According to our legislation, the only way to have effective right over a trademark is with the certificate of registration issued by the competent authority which, in the Colombian case, is the Superintendencia de Industria y Comercio (Superintendence of Industry and Commerce). The only way to have exclusiveness of a trademark is to follow these steps:
- Availability Trademark Search (optional).
- Trademark application for registration.
- Form exam.
- Publication in the Industrial Property Gazette.
- Oppositions.
- Replies to the opposition (optional).
- First Instance Decision.
- Law recourses (Reconsideration petition and subsequent appeal).
Is it compelling to carry out an availability trademark search?
Once it is exactly determined the trademark susceptible of protection and the specific products and services that it intends to protect, it is advisable to conduct an availability trademark search, from which it can be analyzed if the sign of interest would have any conflicts with previous registered signs in favor of third parties.
Even though this procedure is not compelling, it is advisable to carry it out in order to avoid that there might be registered and valid signs in favor of other rights-bearing subjects that would prevent the protection of the trademark of interest.
Which are the needed requirements for a trademark application for registration?
The requirements for a trademark application for registration refer to:
- A power of attorney duly notarized and for those powers of attorney granted abroad, legalized by the Apostille System or by the Colombian Consulate.
- An exact identification of the applicant, which includes address and nationality.
- A certificate of existence and legal representation of the applicant, only if it is a company.
- An exact indication of the trademark.
- An exact indication of the products and/or services to identify.
Is it possible to modify the application?
During any step of the procedure it is possible to modify the trademark application regarding the following aspects:
- The identity of the applicant (transfer, change of name).
- The domicile of the applicant.
- The restriction of the products initially applied for protection.
It is necessary to take into account that no substantial modification can be made about the composition of the sign applied for registration. Also, the products and services to be protected cannot be extended.
How much time does the form exam take?
Once a trademark application is filed, the trademark authority will have approximately two months to study if the application fulfills all the formal requirements and to order its publication in the Industrial Property Gazette.
If there is a formal requirement that has to be fulfilled, the competent authority will demand the applicant within the legal term to complete the legal formal requirements otherwise the application will be declared in state of abandonment.
Is it compelling the publication in the Industrial Property Gazette?
Yes, because this is the step that makes public the trademark application, for third parties to acknowledge the existence of the application and if consider pertinent, within the following 30 days of the publication date, file an opposition to the application for considering it harmful of any of the absolute or relative causes for non-registration of a trademark.
What happens if a third party opposes?
Once a third party opposes to a trademark application, the applicant is notified within the next 30 following days and has to file defense arguments. Then the file will be subject to a substantive examination in order to decide if the trademark can be registered or not.
How long does the substantive examination take?
Even though it is not possible to exactly determine how long it will take the trademark authority to decide about a trademark application, the approximate time varies between six and eight months. When the application has third party oppositions against, the procedure can take approximately eight months or more to reach a first instance decision.
Can the first instance decision be controverted?
Once the first instance decision is issued, the parties can interpose a reconsideration petition and subsequent appeal or directly an appeal. Each one of the decisions can take between six and eight months to be reached by the trademark authority.
What other legal resources exist to object the adopted decisions of the trademark office?
Once the legal resources are decided by the trademark authority the possibilities of objecting the decision of the Trademark Office are exhausted.
However, there is the possibility to turn to the maximum juridical instance in our country, the Council of State of Colombia, filing a nullity action to revoke the decisions adopted by the Trademark Office.
What happens when a trademark registration is granted?
Once a trademark is granted, for ten years from the date of the official decision that contains the registration, the trademark authority will issue a document by which the number of the register certificate is assigned, and it will be understood that the holder will have 10 years of exclusive rights over the sign, only for the products and services for which the protection was conceded.
What rights and obligations arise with a trademark registration?
Rights:
- The main right that arises is the one of holder´s exclusiveness of the respective trademark for the products and/or services that specifically were requested to be protected.
- The above statement raises the possibility of forbidding that third parties without the holder's rights consent can use it to distinguish the same products and/or services.
Obligations:
- Use of the trademark, otherwise the certificate of registration might be cancelled for non-use.
- Renewal of the trademark every ten years.
- Filing of changes of name, changes of domicile, transfers, licenses before the trademark authority.
When can a trademark register be cancelled?
After three years since the date that a trademark register is granted, any third party can request its cancellation for non-use. At the same time, if within the legal term there is no suitable probative material of said use, the registration will be cancelled and the third party that claimed for this action, will have preferencial right to obtain the trademark registration.
Aside from a non-use cancellation action, a registration can be cancelled because of the trademark's vulgarization or the sign's notoriety in favor of a third party.
Can the owner of a trademark registration resign to it?
Yes. In fact, in any moment only the owner of the trademark registration directly or by a representative can resign to the trademark registration, paying the official fees set for this purpose.
What is a collective trademark?
Is the one associations and corporations apply for and regardless of identifying products and/or services from different businessmen, they have the purpose to accredit that those products and/or services have features in common.
The only difference in the procedure of these trademarks, related with those of products and services, is that they demand copy of the by-laws of the association that is applying for the sign protection, the precise list of its members and a management trademark protocol that indicates how is it going to be used.
What is a certification trademark?
Is the one that points out quality or other characteristics of the products and services to distinguish, and that precisely accredits the owner of the trademark. This registration procedure is the same as the one observed for trademarks of products and services.
What is a trade name?
It is the phrase or legend that complements a trademark. Therefore, always at the time of applying for the protection of a trade name, the trademark registration to which it is associated must be very clearly indicated.
The same procedure of trademark protection of products and services is applied to the trade names and its validity will be the same of the trademark that it complements.
What is a commercial name and an emblem?
Is the denomination that identifies a businessman within the ordinary course of his business. At the same time, the emblem is the way a commercial establishment is identified, and in both cases, different from the other distinctive signs, the rights are acquired by use.
Therefore, it is advisable to proceed with the emblems and commercial names deposit before the Trademark Office, when a presumptive date of use of the distinctive signs is constituted.
What is a denomination of origin?
Those are names of geographical places that indicate the origin of the product, and whose characteristics are unique and of high recognition, precisely by the geographic area from which these products come.
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