Preferential registration rights following cancellation clarified

The Colombian Trademark Office (TO) has issued a resolution clarifying the preferential rights of registration available following the cancellation of a trademark for non-use (Resolution 2014).

Colombian legislation states that a party can bring an application to cancel a registration for non-use if the registration has not been used by the mark owner or an authorized party in the three years preceding the filing of the cancellation action.

Article 168 of Andean Community Decision 486 on a Common Intellectual Property Regime indicates that:

"The person who obtains a favourable ruling in a cancellation for non-use action against a third party's trademark, shall have the preferential right to registration. This right may be invoked at the filing time of the request for cancellation or within three months, following the effective date of the decision that ends the administrative procedure for trademark cancellation."

However, the legislation set out above does not specify the exact nature of the preferential rights available. Non-use cancellation actions are often used as a defence to an opposition procedure in which a mark owner opposes registration of an identical or similar trademark. It was unclear whether a successful cancellation for non-use defence would give rise to a preferential right to register a mark that was similar (as opposed to identical) to the cancelled trademark. There was also some confusion as to whether the preferential right allowed for automatic registration of the successful party's mark.

The TO has now clarified the law in this area. First, it noted that the preferential right to registration is not automatic. The cancellation of a trademark does not mean that the mark is, as a direct consequence of the cancellation, registered in the name of the successful party. The successful party's mark must be examined by the TO in the same way as any other trademark.

Second, the preferential right only allows registration of a trademark that is identical to the cancelled mark.

Ramiro Castro Duque, Brigard & Castro, Bogota