Diageo Brands B.V. applied for a tactile trademark before the Colombian Trademarks Office on February 27, 2015.
The description outlined “a texture (surface) embossed with a crackled appearance, chapped or cracked, created from the agglomeration of irregular geometric shapes which include mostly pentagons, rhomboids and hexagons, the sides or line segments are between 3 and 6 mm length and 0.5 0.08 millimeters in height and from 0.1 to 1 mm thick. The sides/line segments and areas contained within these line segments are smooth. The material used in this texture is amber glass in various sizes.” The trademark was applied for in class 33, under serial number 15-045738, to distinguish alcoholic beverages, with the exception of beer, and aims at protecting the texture of the bottle of a whiskey, OLD PARR. According to Article 134 of the Colombian Trademark Law, any sign capable of distinguishing goods or services on the market can be registered as a trademark. Furthermore, item f) of the article states that the shapes of the products, their containers and wrappings are registrable as trademarks.
Taking into consideration these legal provisions, the Andean Community of Nations’ Court of Justice issued a prejudicial opinion and interpretation on whether or not was the required sign registrable as trademark.
Based on the Court’s report, the Trademarks Office eventually granted, through resolution No. 34.530/2016, the required mark in 2016, which constitutes the very first registration of a tactile mark in Columbia.
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The Colombian Superintendence of Industry and Commerce (SIC) has recently joined the TM5 ID List, a compilation of approximately 14,000 pre-approved descriptions (“IDs” or “identifications”) of goods or services that are associated with trademarks.
The TM5 ID List was developed by the TM5 partner offices, namely, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market (EUIPO), the State Administration for Industry and Commerce of the People’s Republic of China (SAIC) and the United States Patent and Trademark Office (USPTO). After the Madrid Goods & Services Manager (MGS) and TMClass, the TM5 ID List is the third harmonized list of goods or services associated with trademarks available to users.
The joining of Colombia to the TM5 ID List is a result of a cooperation agreement signed by the SIC with the TM5 partner offices in order to facilitate trademark registrations both nationally and internationally.
Trademark applicants must provide national offices with IDs of the goods or services that are associated with the trademarks for which they are applying. Applicants can either craft the IDs on their own, or select an ID, or a combination of IDs, from lists of possible IDs that the national offices have approved. Therefore, trademarks applicants can trust that IDs found in the TM5 ID List will be accepted at all TM5 partner offices and other participating offices, increasing the predictability and consistency of decisions and legal certainty among these offices.
The TM5 ID List has been primarily approved and translated by the SIC. Other countries that have joined this initiative as observers are Mexico, Chile, Philippines, Russia and Singapore.
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The Patent Prosecution Highway (PPH) is a set of initiatives for speeding up the examination process of patent applications filed in participating patent offices.
According to the PPH, when an applicant receives a final ruling from a first patent office (Office of First Filing – OFF) where at least one claim is allowed, the applicant may request fast-track examination of corresponding claims in a corresponding patent application that is pending in a second patent office (Office of Second Filing – OSF).
The Colombian PTO (SIC) has had PPH agreements with the United States Patent and Trademark Office (USPTO) since 2012, the Spanish Patent and Trademark Office (OEPM) since 2013, the Japan Patent Office (JPO) since 2014 and a PPH pilot program with the South Korean Patent Office (KIPO) since February 2016. Additionally, as we reported in January 2016, the SIC and the European Patent Office signed a Memorandum of Understanding (MoU) to implement a PPH Pilot Program.
The request for PPH in Colombia must be done when requesting the substantive examination, and a copy of the following documents must be filed: (a) the granting decision certificate of the OFF, (b) the granted set of claims together with its translation into Spanish, (c) the office actions regarding the substantive examination issued by the OFF together with their translation into Spanish, (d) non-patent prior art documents cited in said office actions, and (d) a claim correspondence table, comparing the set of claims granted by the OFF and the one pending at the SIC.
It should be pointed out that, when an applicant requests the PPH for a pending patent application before the SIC, the Colombian examiner not only checks the aforementioned claim equivalence, but also that the pending set of claims complies with the IP law regarding non-patentable subject matter, as well as with the clarity and conciseness requirements, which are very strict in Colombia.
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On April 11, 2016, the Colombian Health and Social Protection office approached Novartis AG regarding a formal price offer as part of the Administrative Process for the Declaration of Public Interest.
This request is regarding a compulsory license for a patent directed to a polymorph of the anti-cancer drug imatinib (marketed by Novartis as Gleevec/Glivec). The request for the Declaration of Public Interest, which is the first step towards a compulsory license in Colombia, was filed by iFarma (representative in Colombia of Health Action International, HAI), Misión Salud (Mission Health) and the Universidad Nacional de Colombia (CIMUN) in November 2014.
The Minister´s communication was made under the recommendation of the Technical Committee for Declaration of Public Interest of the Ministry of Health and Social Protection, and a price of COL$ 140 per milligram of imatinib as the maximum selling price to the public was bid, which involves a 60 percent discount over the marketed drug Glivec.
A compulsory license is a legal mechanism by means of which a government allows for the generic production of a drug without permission of the patent holder. It is one of the flexibilities on patent protection included in the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement.
In Colombia, compulsory licenses are established in Chapter VII of Decision 486 of the Andean Community Commission. When a request for a compulsory license is based on a declaration of public interest, the procedure is governed by Decree 4302 of 2008.
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In chemistry, polymorphism relates to the ability of a solid material to exist in more than one form or crystal structure. Polymorphs are considered crucial in the development of new pharmaceutical products, since the different crystalline forms of a drug may have different physicochemical properties that can influence the quality, safety and efficacy of the final drug product.
Although Decision 486, which establishes the common IP regime for Colombia, Bolivia, Ecuador and Peru, does not specifically exclude polymorphs from patentability, the Colombian PTO (SIC) has usually set very high standards regarding the compliance with the clarity and inventive step requirements, resulting in many patent applications directed to polymorphs being rejected.
One of the most common objections raised by Colombian examiners regarding polymorph patent applications is the lack of clarity of claims. According to the SIC´s Guidelines for patent examination, a polymorph must be characterized in a claim by its physicochemical parameters, such as:
1. Single crystal x-ray diffraction pattern (SCXRD). If a claim characterizes the polymorph through this pattern, no additional data will be required.
2. X-ray powder diffraction (XRPD) pattern, which must have at least 20 characteristic peaks measured between 5°, 2θ and 90°, 2θ. X-ray analysis is the preferred technique to characterize a polymorph.
3. Raman and IR spectroscopy.
4. 13C-NMR spectroscopy.
5. Methods of thermal analysis: TGA, DTA and DSC.
Even if claims are clearly drafted as described above, many patent applications referred to polymorphs are rejected by the SIC due to lack of inventive step. The Colombian PTO requires demonstration that the new polymorph unexpectedly solves a technical problem in the prior art (for example enhanced pharmaceutical efficacy), usually by the submission of comparative data.
In 2009 the Andean Court ruled in favor of the patentability of an application referred to a new polymorphic form of atorvastatin calcium (Form III) that had been previously rejected by the SIC due to lack of inventive step. The Court decision stated that it was non-obvious to a person skilled in the art.
However, the above Court decision was not adopted by the SIC and the high standards regarding the compliance with the inventive step requirement have been generally very subjective, so the decisions on polymorph patent applications have varied considerably from application to application.
Recently, the SIC has granted a patent to Novartis AG related to a polymorph of a compound useful for the treatment of respiratory diseases. Hopefully this reflects a more favorable approach of the SIC to the analysis of polymorph patent applications that are properly characterized and show surprising effects.
On February 2, 2016, the Colombian PTO (Superintendence of Industry and Commerce – SIC) published Resolution 3719, which regulates some of the articles of Decision 486, a common IP regime for Bolivia, Colombia, Ecuador and Peru – regarding the conversion of applications, the filing of patent divisional applications and the patentability examination.
- Resolution 3719 establishes that a request for: i) the conversion of an application; ii) the division of a patent application into two or more divisional applications, or iii) the merger of two or more patent applications into one, can be filed at any time during the proceedings, until the resolution deciding on a request for reconsideration of a final decision (either granting or rejecting) has been issued by SIC.
Therefore, Resolution 3719 clarifies articles 35, 36 and 37 of Decision 486, which state that a request for the conversion, division or merger of patent application respectively can be filed “at any time during the proceedings.”
- Regarding the “conversion of an application”, Resolution 3719 establishes that said term refers to the conversion of a patent into a utility model application and vice versa, and of a utility model to an industrial design application.
When a request for the conversion of a patent application into a utility model application is filed after the deadline to request the examination for a utility model has expired, the utility model examination fees have to be paid when requesting the conversion. The same applies when requesting the conversion of a utility model application into a patent application.
With regard to divisional applications, Resolution 3719 states the following:
- If the applicant does not divide a patent application as suggested by SIC when the application does not comply with the unity requirement, the patentability examination will be only performed on the first inventive group identified by the examiner.
- A divisional application cannot be the parent application for a further divisional, i.e., a divisional application cannot be further fractioned into one or more divisional applications.
- When a divisional application is filed voluntarily by the applicant, the division will have to be done “literally”, taking into account the consecutive numbering of the claims. Additionally, the description will have to be in agreement with the division of the claimed subject matter.
- Resolution 3719 establishes that, if with the response to a patentability examination report, the applicant: i) amends the set of claims; ii) amends the description; iii) or files a new set of claims, the Colombian PTO could, if deemed necessary, issue up to two more examination reports. However, the patentability examination must be finished after 18 months counted from the publication date (9 months for utility models).
Additionally, it is established that in any of the cases i-iii described above, the official fees corresponding to the substantive examination must be paid again.
Should you require any further information, please contact us. We will follow the implementation of this resolution closely and will keep you updated regarding any further developments on this matter.
Through Resolution No. 101961 of 2015, the Colombian PTO has protected the designation of origin (DO) “CAFÉ DE HUILA” (COFFEE HUILA), and has rejected the trademark application “CAFÉ RIO SUAZA” (COFFEE RIO SUAZA) claimed by Oliver Torres Marques to identify coffee-related products included in Class 30 of the Nice International Classification.
By means of Resolution 17989 of April 2013, the local PTO protected the DO “CAFÉ DE HUILA” (COFFEE HUILA), which distinguishes “Coffee” in Class 30 of the Nice International Classification. A defined geographical area and the height range between 1000-2200 meters above sea level was also established. That area includes certain municipalities and towns that are part of the region of Huila.
The Colombian PTO considered that due to the fact that the trademark application “CAFÉ RIO SUAZA” (COFFEE RIO SUAZA) contains the word “SUAZA,” the DO COFFEE HUILA was suggested. Suaza is a municipality in the region of Huila, which is part of the protected DO by geographic area. The consumer may be confused by both trademarks because they have a similar geographic origin.
For these reasons, the Colombian PTO decided to deny the trademark application filed by Mr. Torres Marques, preventing the registration of Cafe Rio SUAZA (COFFEE RIO SUAZA), from taking advantage of the reputation and prestige of the DO “CAFÉ DE HUILA” (COFFEE HUILA).
It is worth mentioning that up to date, the Colombian PTO has granted DO protection to 22 products of Colombian origin, five of which are related to coffee: “Café de Colombia”, “Café de Nariño”, “Café de Cauca”, ”Café de Huila” and “ Café de Santander.”
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In January 2016, the Colombian Superintendent of Industry and Commerce, Pablo Felipe Robledo, and the President of the European Patent Office, Bennoît Battistelli, signed a Memorandum of Understanding (MoU) to implement a Patent Prosecution Highway (PPH) Pilot Program.
The PPH program enables an applicant whose claims have been determined to be patentable/allowable to have a corresponding application filed with a PPH partner office processed in an accelerated manner while at the same time allowing the offices involved to exploit available work results.
The Colombian PTO (SIC) also has running PPH agreements with the United States Patent and Trademark Office (USPTO) since 2012, the Spanish Patent and Trademark Office (OEPM) since 2013 and the Japan Patent Office (JPO) since 2014.
We will keep you updated regarding any further developments on this matter.
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The local trademark office authorized use of the Colombian official seal of Designation of Origin (DO) to 40 craftsmen from twelve regions of Colombia.
The craftsmen who were recognized now have a certificate that identifies them as beneficiaries and/or producers or processors of a product that is protected with a DO and thus guarantee consumers the quality expected in each of those products.
Nine collective marks (identified as CISLOA, ECOSOMBRIO, ASOJAMAR, SANTALT, ARTS & SEDA, ACEDAR, SARASWATI, ASOCHIARTE and LA ESPERANZA) have been granted to nine different associations of craftsmen located in the cities of Caldas, Risaralda and Boyaca who met the pertinent requirements according to the Decision 486 of the Andean Community.
We will report additional information as it is available.
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On December 10, 2015, the Colombian PTO (SIC) announced that the renewal of trademarks and trade names will now be available only online.
Only those renewal applications that have been filed duly on time after paying the corresponding fees will be accepted. In Colombia, a trademark renewal must be filed within six months before the expiry date (10 years after registration), or within the grace period of six months after the expiry date.
After the online renewal has been applied for, the applicant receives i) an email acknowledging receipt and ii) a second email with the renewal registration certification and its new term of validity.
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