Colombia is the second country in the Latin American region (after Cuba) to join the Madrid trademark filing system and became the 87th member of this international trademark system.
The treaty will enter into force with respect to Colombia, on August 29th, 2012.
Joining the Madrid Protocol is a positive development for Colombia, since this country has acknowledged the vital role trademarks play in its economy. The accession to this international trademark system will serve as a useful tool to promote the economic development of the country, taking in consideration the multiple advantages it offers.
As a matter of fact this achievement has been possible thanks to the support of the Colombia’s private sector, which recognizes its benefits as an instrument to enhance the competitiveness of their enterprises.
Now, local companies looking to participate in the global market can file a single trademark application in one language, saving both time and money.
The Madrid system is equally attractive to large businesses, as to small and medium-sized enterprises, which are the largest users of the system. Despite challenging economic conditions, 2011 saw the highest number of international trademark applications ever filed under the Madrid system, with a 6.5% increase compared to 2010.
To read more about it, please revert to the related news.Read More
After a long process, this July the Colombian Congress approved the adoption of the Madrid Protocol by Law No. 1455/2011, which was possible thanks to the strong support of multiple local organizations and particularly the Colombian PTO.
This very important step, however, does not mean that the Protocol will immediately enter in force, as it still must go through other legislative procedures, which will culminate with the deposit of the instrument of accession with WIPO. Three months after this later event, the Madrid Protocol will be available in the first South American country.Read More
Despite the fact that filing of divisional patents has been recently accepted by the PTO, the divisional applications will only be accepted by the PTO (i.e. granted a record number) at the moment of resolving the reconsideration action and only if there is no overlapping at all between the divisional and the original claims.
Consequently, applicants should be completely certain, that the subject matter of divisional claims is completely different from the one of the original claims. Otherwise, it is highly probable that the prosecution of the divisional application is not accepted by the Colombian PTO. If necessary, the divisional claims can be modified at any time before the reconsideration action is solved. Once the PTO has decided on the reconsideration action, it will not be possible to make any other modification.
On April 21, 2010, the Colombian Ministry of Health issued Decree 1313 setting forth the mechanisms for private and public actors to require a controlled parallel importation into Colombia of legitimate or genuine pharmaceutical and medical devices bought abroad from an authorized third party.
Decree 1313 establishes that, from now on, it is not necessary to have the consent of the manufacturer in order to import those legitimate products into Colombia and, moreover, set forth some of the conditions and requirements to petition a âcontrolled parallel importationâ to the pertinent Colombian authorities.
The Decree mentions the Doha Declaration adopted under the WTO on November 14, 2001 as one of the international legal sources supporting this measure, which, according to local authorities, has the goal of lowering the costs of such products in the very short term.
Parallel imports have been allowed in Colombia according to Decision 486, which is the mandatory IP law for the whole Andean Community setting forth the standard of international exhaustion of intellectual property rights, but the sanitary regulations that were in place limited their use.
The most relevant restriction was that the importer of a pharmaceutical or medical device had to get the authorization from the local Health Authority (INVIMA) to commercialize in Colombia. In order to do so, it was necessary to count with the consent of the foreign manufacturer who also had to permit the importer to use the mark or commercial name for the product.
Among the most relevant terms and conditions for obtaining this approval is worth mentioning that they last, at least one year; the products must be approved by INVISA but exceptions to this may be granted in certain cases; restrictions on quantities and labeling must be observed.
Some lower level regulations implementing this measure have started to be issued by local administrative authorities and others are expected to follow soon.
Thus, since these regulation entered in force, Colombian importers buying pharmaceutical or medical devices abroad from authorized third parties without having to obtain an authorization from the manufacturer can file a request with INVIMA with the health evidence of the exporting country and start commercializing those legitimate products in the country.
The US Congress approved, after several years, the FTA between Colombia and USA on one hand and between Panama and USA on the other. The next and last step will be the implementation of this agreement where the rules of each country must be adequated to the contents of the FTA.
As per the IP point of view, the main ADVANTAGE of this agreement will be that it will remove significant barriers to U.S. goods from entering Colombia’s and Panama’s markets, which would promote the filing of new trademarks in these Latin-American countries.
Regarding Panama, in light of its strategic location as a major shipping route also enhances the importance of the Agreement. Approximately two-thirds of the Panama Canal’s annual transits are bound to or from U.S. ports, which may also increase customs / border activity as far as border protection is concerned.
On October 2nd 2007 the Superintendence of Industry and Commerce regulated the External Circular N�06 that implemented an on-line filing system for names of origin, trademarks, leitmotivs, names and commercial ensigns.
The above mentioned system is an alternative to the in-person filing which is currently operative and is available to those interested in using this on-line service. The users are required to create a main email address and preferably a secondary one, specifically authorized for that task.To this end, the prospect must sign in with the Superintendence database and choose the IP on-line services option found on this entity web page. Afterwards, an email containing information such as user name and password will be delivered to the registered email account.The on-line filing user will be entitled to file the above mentioned distinctive signs, oppositions, renewals, registration cancellations, waivers of rights, filing of names and commercial ensigns, license registrations and even pay fees through PSE (Electronic Service Supplier).We must point out that the aforesaid system has not been officially authorized and is currently on a testing period.The system being tested is available at http://www.sic.gov.co/Servicios_en_Linea/Propiedad.phpRead More
The Ministry of Commerce, Industry and Tourism of Colombia issued Decree No 4886 on December 23, 2011. The decree, which came into force on December 26, 2011, modifies the structure of the Superintendence of Industry and Commerce, the authority in charge of the National Industrial Property System and determined functions of its departments.
In trademark matters, the most important changes are:
- Reconsideration petitions against decisions issued by the Head of Distinctive Signs are no longer possible. The only applicable remedy is an appeal, which must be decided by the Deputy Superintendent for Industrial Property.
- The Head of Distinctive Signs is authorized to arrange facilitation hearing between applicants for registration of distinctive signs and opposing third parties, to propose amendments that will allow applications to mature into registrations.
- The Superintendence of Industry and Commerce is authorized to question, under oath and in fulfillment of the formalities in the Civil Procedure Code, any person whose testimony is useful in clarifying the facts of the competition.
Additionally, on January 31, 2012, the Superintendence of Industry and Commerce of Colombia, seeking to modernize even further the industrial property processes, announced that the Industrial Property Gazette would be published twice a month in the future (i.e. every two weeks).
Previously, the gazette was published once a month.
These changes respond to the aim of the Colombian Superintendence of Industry and Commerce to provide users of the Industrial Property system a better, more effective and faster service.Read More