Colours are an essential part of a mark, office rules

The Colombian Trademark Office (TO) has issued an opinion establishing that the colours protected as part of a trademark registration are an essential part of the registration (Opinion 03098021).

Article 166 of Andean Community Decision 486 on a Common Intellectual Property Regime establishes that the use of a trademark in a form different from that in which it was registered does not (i) constitute grounds for cancellation for non-use, or (ii) lessen the protection afforded to the trademark, if the details or features that differ between the registered form of the mark and the form used do not alter the mark's distinctive character

The TO's opinion indicates that where a mark is registered for specific colours, using it with different colours constitutes a substantial alteration that affects its distinctive character. This in turn (i) deprives the mark used from the protection afforded by registration, and (ii) may lead to the cancellation of the registered mark for non-use.

Another consequence of the TO's opinion is that if the mark owner wishes to protect its mark using different colours from those specified in the registration, it has to file a new application claiming protection for these other colours. A simple modification of the existing registration will not suffice.

Valerie Fritz, Alvaro Castellanos M & Cia, Bogota