Applications can be successfully opposed based on Washington Convention

The Colombian National Trademark Office has recently ruled in a case involving the application of the Washington Convention, which regulates the possibility of opposing a trademark application in Colombia based on earlier trademarks rights in the United States or any other convention member.

In order to be successful in an opposition based on the Washington Convention, several requirements (established when the convention was adopted in 1929) must be met.

Resolution 51872 of the National Trademark Office, dated August 30 2012, is important in that it interprets the Washington Convention based on the literal meaning of its terms, instead of analysing their significance according to the current trademark laws. For example, the term 'class' was given its natural meaning, thereby disregarding the international classification of goods and services, which dates from 1957. Therefore, where the convention states that the opponent must own rights in a similar trademark for products of the same class, this shall be understood as meaning that the opponent's mark must cover similar goods, rather than products belonging to the same international class.

In this case, the opponent owned a trademark registration for the mark BODYTECH in the United States, which covered “nutritional and dietary products” in International Class 5; the opposed trademark BE POWERED BY BODYTECH sough to cover “proteins for human consumption, protein concentrates for foodstuff”, among others, in International Class 29.

The National Trademark Office concluded that, even though the products fell within different international classes, they were of the same kind (or 'class' under the Washington Convention). Therefore, registration of the opposed mark in Class 29 was refused.

Margarita Castellanos, Castellanos & Co, Bogota