Colombia: TM Registration. Part 2

In the first part, we looked at the legal basics you need to know in order to better understand the scope and regulation of trademark registration in Colombia. This blog post is dedicated to the details of the registration procedure. We will also dwell on how to protect TM rights in Colombia.

Online submission of documents

Online filing of documents for registration of TM in Colombia has long been common. What's more, applicants are encouraged to use this service by offering lower online application fees. Documents in electronic form are submitted to the registration authority through the personal account on the portal by filling in templates or in the form of files, which are digitally signed by the applicant. To submit such documents, the applicant must register on the portal. The regulator will review the documents and in case of a positive decision, will issue a certificate confirming that you are the only owner of the rights to TM.

Before filing an application you are recommended to search for similar TMs in order not to waste precious time.

Duration and cost of TM registration in Colombia

Typically, the whole registration procedure takes about nine months; however, it will take significantly longer if a third party files an objection to your TM registration in Colombia.

You can find out the actual cost of TM registration during the consultation on the procedure for registering a trademark in Colombia.

If your application was rejected for any reason, you can appeal this decision within 10 business days.

Disputable TMs

It is worth noting that if your company is very widely known in Colombia and is easily found on the Internet for requests containing a disputed trademark filed with a Colombian regulator, then the application may well be refused without your active participation. State experts will be able to learn about your company from publicly available sources and reasonably consider that registering your TM in the name of some other applicant could be misleading to the consumer.

Proof of use

You do not need to prove the use of your TM before you register it. However, you can prevent the registration of an identical or similar TM - in this case, proof will be required.

In order to prevent the unlawful TM registration in the name of your opponents or to terminate the legal protection of an already registered mark, you will need to prove the fact that you should have owned this trademark.

Of course, everything would be much easier if you applied for the registration in a timely manner. Now, you will have to raise supporting documents that clearly demonstrate the fact of a long and widespread use of the controversial trademark. For example:

• agreements with your clients (TM can be in print or in headers and footers), with invoices, payment orders and closing documents (acts). The advantage will be the widest possible geography of your contracts;
• advertising materials (photos of signs, materials of publications in magazines, etc.), as well as contracts for their production and placement. Agreements with contextual advertising systems, accompanied by screenshots of pages with ads, are also suitable.
• screenshots of your website pages, pages on social media, etc.

Legal protection of trademark rights in Colombia

Civil courts hear cases of TM rights infringement in Colombia. If you need legal assistance to file a claim in a Colombian court, please contact our legal advisors. Qualified advice on resolving IP conflicts in Colombia will help you better understand the issue and also consider alternative ways of resolving disputes in Colombia, which can cost you less without losing efficiency.

Arbitration in Colombia

Colombia's amicable dispute settlement procedures are widely used in cases of violations of TM rights, given its effectiveness. Arbitration is often used to resolve disputes over licenses and franchises.