International Trademark Registration in Colombia

International Trademark Registration in Colombia: A Complete Guide

Before Law 1455 of 2011

Before the enactment of Law 1455 of 2011, international trademark registration in Colombia was governed by the Paris Convention of 1883, administered by the World Intellectual Property Organization (WIPO). This system required businesses to register their trademarks country by country, involving different legal procedures, handling multiple languages and currencies, among other issues, which significantly increased costs. This scenario changed with the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, administered by WIPO, which was approved by Law 1455 of 2011 and entered into force on August 29, 2012.

The Madrid System

From 2012 onwards, Colombia has used the Madrid System to register trademarks in the territories that have previously ratified the treaty. According to the official WIPO website, the Madrid Union currently has 106 members and covers 122 countries, including the United States and the European Union.

Who can file an application for international trademark registration in Colombia?

Article 2 of the Protocol explicitly states two basic requirements for applying for an international registration: first, the applicant must have a prior application or trademark registration in Colombia (base application or base registration, respectively); second, the applicant must have: Colombian nationality, domicile in Colombia, or a real and effective industrial or commercial establishment in Colombian territory.

Where is the application filed?

Articles 2 and 3 of the Protocol stipulate that the applicant must file an application for international trademark registration directly with the national or origin trademark office; in the Colombian case, this would be with the Superintendence of Industry and Commerce (SIC). The SIC is responsible for “receiving, certifying, and forwarding applications to the International Bureau of the World Intellectual Property Organization”[Circular única de la SIC title X chapter 6° article 6.1.1.].

In what language is the application filed?

The application documents submitted to the SIC must be in Spanish, except for the declarations of intent to use the mark required by some designated contracting parties in the international application; in that case, it will be submitted in the language required by that contracting party; for example, the United States requires this declaration and it must be submitted in English. Other designated contracting parties that require this document are: Brunei Darussalam, India, Ireland, Lesotho, Malaysia, Malawi, Mozambique, New Zealand, the United Kingdom, and Singapore.

How is the application filed? How much does international registration cost?

The international trademark application must be filed directly with the SIC office “on paper, by machine using the official MM2 form provided by the International Bureau of the World Intellectual Property Organization-WIPO on its website. Likewise, the list of requirements for submitting the application is set forth in Article 3 of the Protocol and Rule 9 of the Common Regulations of the Madrid Agreement Concerning the International Registration of Marks.

Furthermore, in accordance with Article 3 of the Protocol, the applicant must pay a transmission fee to the SIC established in Resolution No. 47754 of 2012 (the amount is established in Colombian pesos). This is without prejudice to the provisions of Article 8 of the Protocol regarding the international fee that the applicant must pay directly to WIPO in Swiss francs. In addition, this rule empowers any contracting party to declare that, with respect to each international registration and renewal, it wishes to receive, instead of a percentage of a supplementary fee and fee supplements, a so-called individual fee to be determined in Swiss francs.

According to the official WIPO website, some of the members that in their declaration opted to receive an individual fee are: Brazil, Canada, China, Colombia, Denmark, the United States of America, Finland, India, Ireland, Iceland, Israel, Italy, Japan, the African Intellectual Property Organization (OAPI), the United Kingdom, Sweden, Switzerland, among others. In addition, WIPO offers an online service where the applicant can calculate the fees required in Swiss francs according to the information they enter.

Is it necessary to use a lawyer?

According to Articles 2 and 3 of the Protocol and the Circular única de la SIC, international trademark registration does not require a lawyer; however, Rule 3.1 of the Common Regulations of the Madrid Agreement Concerning the International Registration of Marks indicates that the applicant or the holder may have a single representative before the International Bureau; their appointment may be made in the international registration application or in a subsequent request. It should be noted that a law firm is considered a single representative.

How long does the registration process take?

If the registration application meets the requirements set forth in item 6.1.4 of Chapter Six of Title X of the Circular única, the SIC will sign, certify, and send the application to WIPO. If there is any discrepancy or missing documentation, the SIC will request that the applicant complete the information as soon as possible. This is because, in accordance with Article 3.4 of the Protocol, “if this is not received by WIPO within (2) months from its date of filing with the SIC, the date of the resulting international registration will not be the latter but the date on which the International Bureau received the international application.”

If the applicant does not correct or supplement the application within the period established in Article 17 of the Administrative Procedure Code, the SIC will consider the international trademark registration application withdrawn, without prejudice to the possibility of submitting a new application in the future.

Now, in accordance with Article 3 of the Protocol, if the international office studies the trademark application and considers that it meets all the required requirements, it will register the trademark and publish it in the Official Gazette of International Marks of WIPO; it will also send a certificate to the applicant of the trademark, who will be called the “holder of the international trademark registration.” In addition, it will notify the offices of the contracting parties that the applicant designated in the international application so that they may study the grant or denial of trademark protection in their territory.

It is important to clarify that “the application for registration of an international trademark has the same effects as an application for registration of a trademark made in each of the countries designated by the applicant; this implies that each country designated reserves its right to grant or deny the protection of a trademark.” Consult. This means that, even if WIPO makes the international registration, the countries that the applicant designated could refuse to grant protection of the trademark under Article 5 of the Protocol. Despite the foregoing, Article 5, paragraph 6, establishes the right of defense of the holder of the international registration with respect to the communication of denial of trademark protection.

In accordance with the foregoing, the Protocol indicates in its Article 5.2 the period that the designated contracting party has to grant or refuse protection of the trademark. As a general rule, the regulation indicates a period of one year from the date on which WIPO notified that office of the application for trademark protection. However, the regulation provides that any contracting party may declare that the one-year period will be replaced by 18 months. Some of the countries that adopted the 18-month period are: Australia, Brazil, Canada, China, Cyprus, Colombia, Denmark, the United States of America, India, Israel, Italy, Japan, Poland, the United Kingdom, Sweden, Switzerland, Thailand, the European Union, among others. Finally, the Protocol also allows, in exceptional cases and with the fulfillment of certain requirements established in the same Article 5, for contracting parties to notify the denial of trademark protection after 18 months.

What is the term of validity of the registration?

Article 6 of the Protocol establishes that the registration of a trademark in the international office is for ten years, with the possibility of renewal under the conditions established in Article 7.

If the base application or registration of the national trademark is cancelled, abandoned, or expires, is the international trademark registration cancelled?

Article 6 of the Protocol establishes that, during the first five years, the international trademark registration is dependent on the base application or registration of the national trademark. “This means that, if during the first five (5) years of the life of the international registration, the base application or registration is denied, renounced, cancelled, or limited in whole or in part, the International Bureau will cancel the international registration.” After 5 years, the international registration becomes independent of the trademark registration in Colombia.

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