Trademark applicants in Colombia should consider whether an accelerated examination is necessary.
Eduardo Varela Pezzano
Under Colombian law, as well as in many other jurisdictions, it is typical for a trademark application to take six months or longer to obtain a final decision granting or denying registration (from the filing of the application, formal examination, publication in the Industrial Property Gazette, and substantial examination). As of April 2023, 177 members of the 1883 Paris Convention for the Protection of Industrial Property and 164 members of the World Trade Organization follow this term.
Cristian David Sarmiento
According to article 4 of the Paris Convention, any person who files an application to register a trademark in any of the Convention member nations has a six-month right of priority to file the same application in the other member states. The subsequent application is understood as filed on the same day as the priority application, making it a benefit for the purpose of the examination of the application on first-to-file jurisdictions.
See the chart below for an example of this situation in Colombia:
In this example, a Mexican application filed on January 1st that is later filed in Colombia on June 30th, but it claims priority and could defeat a much earlier (February 1st, in this case) application for an identical or likely-to-be confused third party trademark that does not claim priority.
Despite the rationale for a six-month or longer wait for a decision, Resolution No. 48348/2014 of the Colombian Trademark Office establishes an «accelerated trademark examination» for local applications. If an applicant wants to register a trademark in less than six months, all they have to do is check a box on the application form, and an examiner will quickly grant registration. However, there are some drawbacks to proceeding with the accelerated examination.
In the case of a regular examination, the Colombian Trademark Office waits usually at least nine months before issuing a registration certificate. This nine-month wait is only in case someone files a priority application from another Paris Convention country member. This nine-month timeframe caters to the six-month priority period defined by Article 4(c)(1) of the Paris Convention, so if no third-party priority application is filed, the examiner grants registration to the regularly examined application, and the registration certificate cannot lose force. The registration certificate of a regularly examined application may lose its force only if the decision is later annulled by a judge.
The accelerated examination from Resolution 48348 is unique in that the applicant is asking for a registration decision within four to six months. This is less than the nine-month waiting time for a regular examination and even less than the six-month Paris Convention right of priority period. The Colombian Trademark Office’s accelerated examination is also «distinctive» in that, if a third-party files for a priority application that predates the accelerated examined application, even after the trademark has been registered, the certificate may still lose force, as it would fall into a “resolutory condition”, according to article 91 of Law 1437 of 2011.
Trademark applicants in Colombia should consider whether an accelerated examination is necessary for their business strategy, keeping in mind that obtaining an accelerated decision in less than six months may cause more issues than proceeding under the regular examination process.
Eduardo Varela: Socio en Cavelier Abogados; árbitro del Asian Domain Name Dispute Resolution Centre (ADNDRC), en la Región Administrativa Especial de Hong Kong de la República Popular China. Abogado y especialista en propiedad intelectual de la Universidad Colegio Mayor de Nuestra Señora del Rosario.
Cristian Sarmiento: Asociado del departamento de marcas, derecho de autor y del entretenimiento de Cavelier Abogados. Abogado y especialista en derecho comercial de la Universidad Nacional de Colombia, y maestrante en derecho privado con énfasis en propiedad intelectual de la Universidad Externado de Colombia.
