A recent report by the Tax and Custom Police, disclosed that between January 1 and October 8, 2014, more than 16 million of counterfeit products, including clothing, foodstuffs, automobile units and tobacco were seized during actions against counterfeiting in Colombia.
Beer, energy drinks, agricultural machinery, powdered milk, cooking and engine oil and make-up are just some of the new and varied products illegally created in Colombia during the past few years. Traditionally, the list of counterfeit products was led by liquors, clothing, books, films, CDs, medicaments, money and documents.
In 2012, beer became big counterfeit business in Colombia. According to a police investigator, there are two methods that forgers are using to produce counterfeit beer. The first one is bringing cheap beer from China and Venezuela and repack it in national bottles and cans. The second and most dangerous method consists of refilling original beer with water and producing the foam by means of soaps and detergents. Since 2012, more than 750 of this type of products have been seized in Bogotá. Shockingly, more than 24% of the alcoholic beverages consumed in Colombia are counterfeit or adulterated, according to the Colombian Association of Liquor Companies.
Regarding powdered milk, the police spokesperson explains how forgers buy jars of known trademarks from recyclers, fill them with cheap powdered milk brought from Venezuela and mix them with sugar, flour and even white cement. Some of these clandestine factories use the same method to produce counterfeit medicaments and multivitamin complexes. According to the Pharmaceutical Security Institute, between 2008 and 2012, 415 of these cases were uncovered in Colombia, which represents 20% of the problem in Latin America and represents 4% worldwide. Since 2013, the Bogotá police have confiscated at least 390,000 counterfeit medicines.
After an application for the word trademark Lavomatic was published, Unilever swiftly filed opposition to the registration. The application was made under Class 9 of the Nice Classification (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, among others).
Unilever alleges that the trademark application could not be registered according to Art 136 of the CAN Decision 486 (the Andean Common Intellectual Property Regime). This article establishes that trademarks that are identical or similar to one previously registered, as well as those reproducing a notorious trademark, cannot be registered.
Unilever is the owner of the trademark Lavomatic in Class 3, which relates to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, among others. Consequently, the Columbian PTO stated that, when comparing the products, no direct or indirect relationship would cause consumers to be confused, since they will be able to identify and individualize one from another and realize that the products belong to different companies.
However, Unilever requested its trademark to be declared well-known and filed evidence to prove that. This consisted in the investment of $2,000 million from 2011 to 2013 on advertising and promotional activities and the revenues for products with the trademark Lavomatic, of $11,876 million in 2011 and $29,000 million in 2012.
After analyzing said evidence, the PTO ruled that Lavomatic by Unilever is an established trademark for the identification of laundry detergents and thus, the application of the trademark in Class 9 was rejected.
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On September 29, 2014, the Colombian Government issued Decree 1873 providing patent term extensions to compensate patent owners in the event of unjustified delays by the Columbian Patent Office in issuing patents. This compensation does not apply to pharmaceutical patents. The decree was issued in order to comply with the regulations established by the Andean Community of Nations, the ADPIC (known as TRIPS in English) and the United States–Colombia Free Trade Agreement.
According to the decree, a patent term is extendible for each day of “unreasonable delay” in the granting of a patent, counted from the last day of the patent term. An “unreasonable delay” exists when a decision to grant a patent by the local PTO takes longer than five years from the filing date of the application, or three years from the date of filing a request for examination.
A patent owner must request restoration of the patent term within two months of the date of issuance of a patent, indicating the PTO delay and the corresponding patent term extension being requested.
Source: http://www.sic.gov.coRead More
The CEO of the International Trademark Association (INTA) and the Head of the IP Section of the Colombian PTO (SIC) have signed an memorandum of understanding to improve trademark protection in Colombia.
An important fact to take into consideration in this regard is that trademark applications have doubled over the last decade in Colombia, with 30,000 applications filed in 2012. In the same year, Colombia also joined the Madrid Protocol.
INTA has similar agreements with other important countries of Latin America, such as Brazil and Mexico. One of the main objectives of this agreement is to improve and advance in the harmonization in the region and strengthen public policy in the field of trademarks.
According to the CEO of INTA, Mr. Sanz de Acedo, “(…) Colombia is playing an increasingly important role in the Latin American and global economies. This agreement between INTA and SIC will help us to achieve these shared goals, (…) INTA is reinforcing its efforts in Latin America—a region of growing economic importance, (…)”
Source: http://www.sic.gov.coRead More
By means of Resolution No. 48.348 of 2014, the Colombian PTO (SIC) will speed up the granting of trademarks and commercial names by allowing applicants to obtain their registration within 6 months. The PTO seeks to reduce the average term for granting or rejection, which currently is close to 5 and a half months.
The implementation of said Resolution, which is in force since its publication on August 28, 2014, will allow the PTO to have an average decision term of 4 months, thus positioning itself amongst the swiftest PTO offices worldwide.
Traditionally, pursuant to the provisions of two international regulations (Article 4 of the Paris Convention and Article 9 of Decision 486 of the Andean Community of Nations), which establish trademark applicants’ right of priority, it was interpreted that it was not possible to grant – but it was to reject – a trademark before 6 months counted from the application date.
The solution found by the Colombian PTO consists in the applicant being able to make a request for the grant of the trademark in a term of less than 6 months, provided that priority for an identical or similar trademark is not claimed.
Statistics provided by the Directorate of Distinctive Signs of the Colombian PTO reveal that during the last 10 years, 253,385 trademarks were applied for, of which only 12,598 (4.9 %) claimed priority.
According to the local PTO, last year 37,000 trademarks were applied for in Colombia, and this year this number is expect to reach 40,000. Therefore, if this tendency is maintained, only 1,960 of these applications will claim priority. While the number of applications with risk of conflict with a previously registered trademark would be of 588 (1.4 %), the rest of them would have benefited from the speeding up of the granting process.
Source: http://www.sic.gov.coRead More
Mild Coffee Huila Company SAS applied at the local PTO for the registration of the trademark ‘Mild Coffee Company Huila’ for tea, cocoa, sugar, rice, tapioca and coffee derivatives, among others.
The National Federation of Coffee Growers of Colombia (Federacafé) filed an opposition based on the fact that the sign lacked distinctiveness and it was descriptive. It is important to highlight that the Directorate of Distinctive Signs agreed with that. However, the decision was reversed on appeal and the trademark in question was registered.
According to Art 135 Decision 486 (the Andean Community common intellectual property regime), signs may not be registered as when they are lacking the necessary distinguishable characteristics and “e) consist solely of a sign or statement that may serve in commerce to designate or describe, in respect of the goods or services for which they are to be used, their quality, quantity, purpose, value, geographical origin, or time of production, or that impart other details, characteristics, or information, including expressions of praise for those goods or services;” (..).
Local PTO declares “Juan Valdez” a well-known trademark and bans the use of the expression “Juvenal Valdez”
In a court ruling, the SIC (Superintencia de Industria y Comercio) recognized “Juan Valdez” as a well-known trademark and also banned the company “Bamboo & Café LTDA the use of the expression “Juvenal Valdez”.
That court resolution was the result of a judicial proceeding related to an alleged infringement of intellectual property rights. The claimant was the National Federation of Coffee Farmers of Colombia (Federacion Nacional de Cafeteros de Colombia) and the defendant was the company Bamboo & Café LTDA. According to local dispositions, in this kind of proceedings the SIC acts as the judge.
The main reason to begin this legal proceeding is when The National Federation of Coffee Farmers of Colombia took notice that the company Bamboo & Café identified a local coffee shop in Bogotá with the words “Juvenal Valdez”, which was considered too similar to their own trademark “Juan Valdez”.
According to the arguments included in the ruling, Bamboo & Café LTDA infringed intellectual property rights by using the expression “Juvenal Valdez”, based on the trademark “Juan Valdez” property of the National Federation of Coffee Farmers of Colombia. Strong similarities between the opponent signs and the high possibility for consumers to confuse both products were demonstrated.
The Suaza Hat, which in 2010 was declared Intangible Heritage of Huila, has recently been granted a Designation of Origin status by the Colombian Superintendence of Industry and Commerce (SIC).
The product that most recently had obtained this designation of origin was the Huila Coffee, whose application was made several years ago by the National Federation of Coffee Makers, the Departmental Committee of Coffee Makers and local committees.
With this recognition, Huila is now the Colombian department that has the most products with this kind of protection: Huila Coffee, Huila Cholupa, Achira Cake and now the Suaza Hat.
Source: http://diariodelhuila.comRead More
Due to the fact that the trademark “Corona” well-known in the beer industry, and the similarity between opponent signs; the Colombian PTO (SIC), decided to reject the trademark application of “Tres Coronas” filed by “Sociedad Industrias Aleas C.A” in int. class 29.
The owner of trademark “Corona”; which is Sociedad Compañía Nacional de Chocolates S.A.S., considers that according to the article 224 of local law, their sign should be considered as well reputed; which means that is known not only in their sector but to the public in general. They also considered that the term “Tres” (in English means “Three”) from “Tres Coronas” is not enough to distinguish both trademarks.
However, “Sociedad Industrias Aleas” owner of trademark application “Tres Coronas” doesn´t agree with the decision of the Colombian PTO. One of the reasons (they argument) is because the opponent trademarks are not similar enough in order to mislead the consumers, despite having some elements in common.
The lawyer of Sociedad Industrias Ales highlights that the Andean Tribunal Court of Justice has established that “the presence of a word with a distinctive content although the others are equal to a sign with the previous register, will not prevent the trademark access of second, especially if the first one contains in its composition and term of common use that are not of exclusive use”.
Source: http://acpi.org.coRead More
Over 10 million people during 2013 were affected by the purchase and use of fake goods in Colombia. Additionally, the different national economic sectors have lost an income of up to $ 720M last year due to the counterfeiting of their products.
Therefore, the Colombian Government has launched the campaign “Whatever you do, play fair”, in an attempt to raise awareness among the Colombian population about this problem and in order for them to purchase original products, support new creations and respect copyright.
The US Embassy in Colombia, which cooperates to strengthen the legal framework, protect the rights of national and foreign authors and make the population aware of this matter, supports this campaign.
The Colombian Superintendence of Industry and Commerce (SIC) has also joined this initiative through its program “An original consumer does not take risks”. According to the SIC, in 2013 more than 80 court cases against companies that had committed a crime against Intellectual Property were initiated and precautionary measures were ordered so as to protect the IP rights of legitimate owners.
Source: http://www.sic.gov.co/esRead More