Timberland secures victory under Washington Convention

In Timberland Company v Stanton & Cia SA (Case 2002-3003-01), the Highest Civil Court of Bogota has upheld the plaintiff's claim to cancel the defendant's Colombian registration of TIMBERLAND pursuant to the General Inter-American Convention on Commercial and Trademark Protection of 1929 (the Washington Convention) on the basis of the plaintiff's prior use of the Timberland trade name in the United States. Colombia and the United States, along with Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru, are members of the Washington Convention, which grants additional industrial property protection to the nationals of the contracting states.

In 1982 Colombian company Stanton & Cia SA applied to register TIMBERLAND in Colombia for goods in Class 25 of the Nice Classification. The Colombian Trademark Office (TO) allowed registration. As a consequence, Timberland Company, a famous clothing manufacturer based in the United States, initiated a number of actions in the Colombian courts. It brought a judicial civil action before the Seventh Civil Circuit Court of Bogota for (i) cancellation of the Colombian registration, and (ii) a permanent injunction preventing Stanton from using the TIMBERLAND mark. It based the action on its prior use of the Timberland trade name in the United States, which, pursuant to the Washington Convention, should have been afforded protection in Colombia since 1978.

In its defence, Stanton alleged, among other things, that proceedings for trademark cancellation could only be heard by an administrative court and not a civil court because such proceedings are administrative in nature. The Seventh Civil Circuit Court rejected Stanton's argument and allowed Timberland's claim under the Washington Convention. Stanton appealed.

The Highest Civil Court of Bogota upheld the earlier decision. It clarified that when an application for cancellation of a trademark registration is aimed at preventing use of a mark and does not attack the validity of the administrative act of registration, it becomes a matter of civil law and not of administrative law. As a result, the court held that Timberland's civil action under the Washington Convention was valid and it upheld the claim.

Fernando Triana and Edna Falla, Triana Uribe & Michelsen, Bogota