Evidence required to obtain well-known mark status clarified

The Colombian Trademark Office (TO) has issued guidelines on the level of evidence required to prove that a trademark is well known and can thus benefit from a higher level of protection (Resolution 34939).

Andean Community legislation, which is applicable in Colombia, defines 'well-known marks' as marks that are widely recognized in the relevant commercial sector by consumers of any of the Andean Community countries. Well-known marks enjoy a higher level of protection, allowing the mark owner to start legal action to prevent the use (by way of an infringement action) or the registration (by way of opposition or cancellation actions) of an identical or similar mark. Well-known marks are also protected against unauthorized use in a domain name.

In order to achieve well-known mark status in Colombia, the mark owner must demonstrate to the TO that its mark is famous. This has often proved to be a difficult task. With this in mind, the TO has now issued some guidelines to help consolidate and clarify the requirements for a declaration of well-known trademark status. The TO stated that a mark owner must demonstrate that a large number of consumers within the Andean Community are aware of the mark. The evidence used to prove this fact must be objective and accurate. To that end, the TO specified that such evidence should be generated, not by the owner of the mark, but by third parties (eg, representatives of advertising agencies, accountants, auditors or distributors).

The TO enumerated and clarified the type of evidence required, including the following:

• Evidence in the form of affidavits by the owner of the mark. However, the TO noted that this evidence does not carry much weight, as it may be biased towards the mark owner. Thus, if such affidavits are filed, all of the statements must be supported by other documents (eg, if sales figures are mentioned, these must be proved through official reports).
  
  
• Documents showing international or foreign certificates of registration. The TO stated that this evidence does not necessarily mean that consumers in the Andean Community know the mark. Thus, other evidence must also be filed.
  
  
• Evidence in the form of published advertisements. The TO specified that copies of magazines, leaflets, newspapers or any other written media in which the mark has been advertised must also be accompanied by information showing the likely number of relevant consumers to have (i) seen the advertisement, and (ii) become aware of the mark as a result of the advertisement. Such evidence could include print run figures and declarations from the relevant advertising agency.
  
  
• Data indicating sales figures relating to the goods or services covered by the mark. This evidence will only be considered by the TO if provided by third-party auditors or accountants.

The TO further stated that the following additional evidence would be particularly persuasive:

• consumer surveys (especially those prepared by companies with experience in that area);
  
  
• affidavits signed by the distributors of the mark in the Andean Community;
  
  
• the book value of the mark as a corporate asset (certified by auditors or accountants).
  
  
• information on the amounts invested in advertising the mark (certified by auditors or accountants);
  
  
• documentation showing that parties have sought to obtain a licence for use or franchise of the mark; and

• evidence that any goods to which the mark relates are manufactured within the Andean Community.

Margarita Castellanos, Alvaro Castellanos M & Cia, Bogota