Licensees, importers and distributors have right to sue
The Trademark Office has issued a legal opinion stating that not only the owner of a trademark, but also the licensee(s), can start trademark infringement proceedings against third parties, provided that the licensing agreement has been registered at the Trademark Office. Although a licensing agreement becomes valid between the parties (ie, the licensor and the licensee(s)) upon signature, it is binding against third parties only when it has been registered.
Moreover, the office held that authorized importers and distributors of goods bearing a registered trademark are allowed to file legal actions for unlawful competition even if there is no licensing agreement between the parties, provided that they can demonstrate their interest in bringing the case - that is, they are active in the market and their commercial interests may be threatened by the unlawful acts.
Importantly, the interest in filing an unlawful competition action is not linked to the existence of a trademark right; in contrast, an applicant must demonstrate that it has rights in the trademark in order to file an action for trademark infringement.
Valerie Fritz, Castellanos & Co, Bogota
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