Since September 2013, by virtue of an agreement signed between the United States Patent and Trademark Office (USPTO) and the Colombian Superintendence of Industry and Commerce (SIC) within the framework of the Patent Prosecution Highway programme, an applicant having filed a patent application in the United States and in Colombia and having been granted by the USPTO, may request that the SIC takes into account the substantive examination carried out by the USPTO.
According to this, when the USPTO is the Office of First Filing (OFF) and the U.S. application contains claims that are determined to be allowable/patentable, the applicant may request accelerated examination at SIC for the corresponding application filed with SIC as the Office of Second Filing (OSF).
If you are interested in receiving more information about the requirements and the request form for this Patent Prosecution Highway programme, please contact us.
The Superintendency of Industry and Commerce (SIC), in the exercise of their judicial functions, applied the first judgment in the process of trademark infringement.
On November 13 th, the SIC decided in the judicial process promoted by AGROCAMPO trademark infringement againstHARDWARE AGROCAMPO SA, owned by Manuel Vergara Corena. In the court ruling, the SIC found that the defendant infringedthe trademark rights of the trademark AGROCAMPO SAS, so consequently ordered the immediate cessation of any use of protected brands and force myself to awarding damages to the actor.
Apart from being the first ruling issued by the Superintendency of Industry and Commerce of Colombia in this area, it is necessary to emphasize the celerity of the agency to serve justice considering it took merely seven months from the filing of the complaint.Read More
The Superintendence of Industry and Commerce (SIC), the highest authority of Trademarks in Colombia, declared by the Resolution Nr. 49475 dated August 23rd 2013 “Juan Valdez” as a well-known Trademark; providing and extending the status of “special trademark”.
A high renowned mark is considered like that, if it is recognizable for most people. The quality, reputation and prestige are taken into consideration, in addition to having the ability to attract consumers with its own presence.
According to the SIC statement: “the sign Juan Valdez is well-known nationally, excellently positioned, with a great commercial trajectory, prestige and a good reputation”.
In 1959, the National Federation of Colombian Coffee Growers, created a character called “Juan Valdez” to promote Colombian coffee around the world. It’s a Trademark with a highly distinctive capacity and has been declared as “well-known” in the European Union, Spain and in Costa Rica.
In December 2012, Arriero Café Bar Restaurante S.A.S. requested the registration for the sign “Arriero Café” as mixed mark, to which the National Federation of Colombian Coffee Growers presented an opposition; arguing that there was lack of distinctive elements in the images that would probably create confusion between the trademark “café Colombia” and “Juan Valdez”.
Source: www.sic.gov.co (Superintendencia de Industria y Comercio – SIC)Read More
The Colombian Office of Industry and Commerce presented the “virtual office of Industrial Property”
Through this new virtual office, any user will be able to submit online any filing application, such as trademarks, patents and others.
The launching of this new tool brings the Colombian PTO’s main target of providing access to the services of the industrial property office to users in any part of the country, closer.
One of the goals of this new tool is to increase substantially the number of local applications filed for trademarks and patents. To encourage this, the Office offers a 5% discount on their official fees in any online procedure.
Some interesting figures:
- The number of trademark applications is steadily increasing From 2009 to 2013, there has been a 41% increase in trademark applications. In this regard, online submissions have grown 103% during the last three years.
- The number of patent applications is also steadily increasing From 2009 to 2013, there has been a 28% increase in patent applications. This % is expected to grow significantly during the next years, due to the online filing possibility.
Source: http://www.sic.gov.co/Read More
By means of Resolution 14583 (23 May 2007), the CTO rejected a trademark opposition against a Colombian trademark application based on a prior Venezuelan registration. The CTO also rejected the evidence related to use of Venezuelan trademarks in regard to the application of Andean norms on cancellation for non-use. The CTO position considered that Venezuela became a third party before the Andean Community as of 22 April 2006, when President Chavez denounced Venezuela’s Andean membership. Thereafter, all rights and obligations acquired under Andean legislation ceased for Venezuela. Accordingly, all oppositions supported on a prior Venezuelan registration or application will be considered as not filed.Information gently provided by Olarte Raisbeck & Frieri, Ltda.Read More
On May 31st 2011, Colombian Congress issued definitive approval to Madrid Protocol, concluding in this way the corresponding legislative proceeding.
The membership to the Protocol must be now sanctioned by the Colombian President and submitted to Constitutional examination.
Becoming member of this Treaty was included in the obligations undertaken by Colombia when entering into the FTA (Free Trade Agreement) with USA.
Together with Cuba, Colombia would be the only country of the region being part of this system.Read More
According to information provided by the press office of the Colombian Senate, on December 1, 2010, the Second Commission of the Colombian Senate, in plenary session, approved Bill 061/2010 calling for accession to the Madrid Protocol.
This Bill was endorsed by some local experts including the authorities of the local PTO (Superintendencia de Industria y Comercio) as well as by international organizations like INTA so it is expected that said country might join the Madrid Protocol sometime soon.
However, this Bill must be approved by the House of Representatives, which had approved a similar Bill (277/09) but failed to be considered in the Senate in plenary session last 2010
Second Level domain name registration “.CO”, opened for Colombian or worldwide registered trademarks
The Colombian Domain Administration has recently opened the second level domain registration under the extension “.co” for trademarks registered world widely before July 30, 2008.
According to the Colombian Domain Administration’s resolution there will be two priority terms depending on the country of registration of the claimed trademark:
- The owners of trademarks registered in Colombia, will have the right to register domains under extension “.co” as from April 1, 2010 until April 20, 2010.
- The owners of trademarks registered in any other country will have the right to register such domains as from April 26, 2010 until June 10, 2010.
The requested domain will have to be identical to the text or nominative elements of the registered trademark; i.e. it won’t be possible to register only one part of the complete registered trademark.
If only one applicant requests the domain, the registration of same will be granted in favor of that applicant.
Should more than one application be filed for the same domain within this period, the domain will be auctioned (in this case the amount paid for the registration will not be reimbursed by the Registrar).
Finally, please be advised that the Colombian Domain Administration has also reduced the requirements for registering domain names; documents and local presence are no longer necessary to register a domain in this country.Read More
Last December 2, 2009 the Colombian Senate approved Bill 277/2009 calling for accession to the Madrid Protocol.
To become effective, the approval by the House of Representatives is still required.
We will keep you informed if new developments during the comming months occur.
Last January, 2012, entered in force Resolution N° 21447 issued on April 11th, 2011 by the Colombian Organism dealing with Industry and Trade. This Resolution establishes, among other topics, the possibility of applying for a trademark in several classes of goods and/or services by filing just one application.
The main goal of this resolution is the simplification of the requirements to obtain and conserve trademarks.
The Resolution also mentions that in the case where a third party files an opposition against a multiclass application, the opponent must indicate against which products and/or services the objection is referring to, pointing out the correspondent classes.
Even though one application is possible, the official fees have to be paid for each class.
Other Latin American countries where multi-class applications are possible:
- Chile: classes corresponding to goods have to be filed separately from the ones corresponding to services
- Costa Rica
- Dominican Republic
- El Salvador