Cancellation and annulment powers split between government bodies

The National Trademark Office of Colombia has concluded that the annulment of a trademark in accordance with Article 8 of the General Inter-American Convention for Trademark and Commercial Protection is the jurisdiction of the Supreme Administrative Court, not the National Trademark Office.

Article 8 provides the following:

"When the owner of a mark seeks the registration or deposit of the mark in a contracting state other than that of origin of the mark, and such registration or deposit is refused because of the previous registration or deposit of an interfering mark, he shall have the right to apply for, and obtain the cancellation or annulment of the interfering mark upon proving, in accordance with the legal procedure of the country in which cancellation is sought, the stipulations in Paragraph (a) and those of either Paragraphs (b) or (c) below:

(a) that he enjoyed legal protection for this mark in another of the contracting states prior to the date of the application for the registration or deposit which he seeks to cancel; and

(b) that the claimant of the interfering mark, the cancellation of which is sought, had knowledge of the use, employment, registration or deposit in any of the contracting states of the mark for the specific goods to which said interfering mark is applied, prior to the adoption and use therefore or prior to the filing of the application or deposit of the mark which is sought to be cancelled; or

(c) that the owner of the mark which seeks cancellation based on a prior right to the ownership and use of such mark, has traded or trades with or in the country in which cancellation is sought, and that goods designated by this mark have circulated and circulate in said country from a date prior to the filing of the application for registration or deposit for the mark, the cancellation which is claimed, or prior to the adoption and use of the same."

As a result of the National Trademark Office's decision, while it remains competent to cancel a trademark on the grounds of non-use, notoriety or vulgarization of the mark in accordance with Andean Community Decision 486 on a Common Intellectual Property Regime, the competence to annul a mark based on the priority conferred by Article 8 lies with the Supreme Administrative Court.

Margarita Castellanos, Alvaro Castellanos M & Cia, Bogota