Rules on affixing marks to goods for export clarified

In response to a public consultation, the Trademark Office has issued clarification as to whether affixing a mark which is identical or similar to another party's registered Colombian mark on to products that are solely destined for the export market, in circumstances where the mark owner does not own registered marks outside of Colombia, can constitute trademark infringement (Ruling issued August 25 2006).

The Trademark Office first established that the owner of a registered trademark in Colombia can prevent third parties from using identical or similar trademarks, provided that such use causes confusion or the risk of associating the products with its own registered mark. The court noted that, where the alleged infringing mark is used in commerce in Colombia, the registered owner must demonstrate that the use of the mark led to negative consequences. However, it also stated that Article 155(a) of Andean Community Decision 486 on a Common Industrial Property Regime authorizes the owner of a registered trademark to prevent another party from:

"using or affixing the trademark or a similar or identical distinguishing sign to products in respect of which the trademark is registered; to products connected with the services for which the trademark is registered; or to the packages, wrappings, packing, or outfittings of those products."

Thus, the Trademark Office reasoned that the use of an identical or confusingly similar trademark in commerce (provided that a negative effect arises) and the affixing of a similar or identical trademark on products (without having to prove a negative effect) may both constitute acts of infringement. In addition, Article 250 of Decision 486 establishes that:

"the owner of a registered trademark who has valid grounds for suspecting that the importation or exportation of counterfeit trademark goods will take place, may request the competent national authority to suspend this customs operation."

In view of this, the TO concluded that affixing trademarks on products in Colombia, for exportation purposes only, may be considered as an act of infringement and the owner of a similar or identical registered trademark in Colombia may start legal action against the person or company affixing the trademark.

Margarita Castellanos, Castellanos & Co, Bogota