No, in Colombia, there is no need to use a trademark to obtain a trademark registration. Nevertheless, the Colombian trademark office can cancel a granted trademark for lack of use during the last three years.
There is no legal obligation to get a trademark in Colombia to sell or promote your products or services. But the fact that you use it will create minimal rights in Colombia. Without a registration, in case somebody is copying your trademark, there is little you can do about it. For this reason, serious players have to register their trademarks in Colombia. To register your brand, you will have to file a local application before the Colombian Trademark Office.
Having a trademark in another country does not create any rights in Colombia. To have a right in Colombia, you have two options:
1. File a Colombian trademark application 2. File an international trademark, Madrid protocol application, and select Colombia as a designated country.
Before offering your products or services, you want to perform a trademark search in Colombia. The reason is simple; you do not want to use a previously registered trademark in Colombia to avoid a trademark infringement lawsuit.
We also advise you to perform a search before filing a trademark application to avoid unnecessaries conflicts or delay during the process.
The Colombian trademark office -SIC- is one of the most efficient trademark offices in the region. Their website has a complete office online database called -SIPI-. Trademark online searches in Colombia are only available in Spanish.
You can also make trademark searches in Colombia using the European Union Intellectual Property Office -EUIPO- Trademark Database (TM VIEW) that consolidates various national databases and allows searches in different languages.
This trademark search will perform an exact match search and can also include other trademarks that contain the same search terms. A good practice is to search also for:
- Similar trademarks - Distinct variations as plurals or gender - Translations. - Obvious misspelled words - Sound-alike works - Other accepted spellings
You should also be familiar with the international trademark classification of goods and services, AKA Nice Classification. This classification is essential because trademarks are registered in a specific class, but they are also relations between the classes.
It would help if you looked closer to trademarks registered in Colombia that are registered in the same class or classes as your brand, but also in classes that could be connected by consumers.
Once you have a list of similar brands, you have to study one by one to see if there is a risk of confusion, and they cover similar goods or services.
If you have a question about your search or want a legal opinion, our Colombian trademark attorneys can help.
The cost will include the official fees plus the professional fees of the Colombian trademark lawyers handling your case. We have developed a tool that can give you the exact cost of your trademark in Colombia in a few clicks.
Yes, Colombia does accept multiclass applications. You can have different classes in the same application paying an additional fee per class.
In case you face an obstacle in one of the classes, it is also possible to split them into different applications.
Foreign applicants should appoint a trademark attorney admitted to practice in Colombia. We can help you with that.
The trademark application must contain: -the applicant’s complete name, address, nationality; -description of the product(s) or service(s) covered by trademark; -a digital sample of the logo (if any); -co-ownership agreement in case of several applicants. In case you claim a priority, we will need the country of origin, registration date, and application number. Once the office verifies that the application complies with all the requirements, it will order the publication of the trademark request. This process can take from two to weeks.
In Colombia, the trademark office requires the need to file a simple copy of the Power of Attorney. No notarization or apostille is needed. To make it simpler, our law office offers the possibility to sign a digital POA.
Yes. About fifteen to thirty days after filing, the Colombian trademark office will publish the application. Third parties have 30 working days to file an opposition. This period can be extended once for another 30 working days if necessary to present more evidence. The applicant will also have 30 working days to respond to the opposition with one equal extension. There is no obligation to file a response, but we hardly recommended to do so.
A smooth application procedure can take between 6 to 10 months. We call a smooth application one with no opposition or office actions.
Office actions can come at two different moments. The first, just after the application, and they will be based on formalities or classifications. The second, after the end of the opposition period, and they will be based on absolute or relative grounds of refusal.
Applicants will have just for one time, one month plus ten working days to reply to an Office action. In case you do not file a proper answer to the office action, the trademark office will declare the trademark application abandoned or denied.
Trademarks in Colombia are valid for ten years from the registration date, and they can renew as many times as needed. You will need to file a trademark renewal and pay a renewal fee six months before or six months after the expiration.
It would be best if you use the trademark, or after three years, the trademark office can cancel it for lack of use. You also have an obligation to renew the trademark after ten years to keep it alive. There is no need to file evidence of use or something similar.
A registered trademark can be challenged for different reasons:
- Lack of use: if you have not used your trademark for three years, it can be canceled. - The trademark is identical, or similar, to another trademark that was declared to be notorious at the moment of filing. - The trademark lost its distinctiveness. - The trademark was incorrectly granted. - The application included false information - The registration was obtained in bad faith - A person obtained the registration with a relationship with the rightful owner of the trademark in another country.
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