Trademark office launches 'trademark prosecution highway'

The trademark office of Colombia (the Superintendence of Industry and Commerce) is seeking to become one of the fastest offices in the world to prosecute trademark applications. In order to achieve this goal, it issued Resolution No 48348 of August 10 2014, pursuant to which it will be possible to grant trademark registrations in less than six months.

This was not possible in the past, as the right of priority granted under the Paris Convention meant that an applicant claiming a priority of six months could prevent the registration of a trademark filed in Colombia within these six months.

If a trademark registration had been granted less than six months earlier, the priority claim would not have had the desired effect - that is, to prevent the registration of a similar trademark filed within the priority term.

In order to solve this problem, the Superintendence of Industry and Commerce issued Resolution No 48348, pursuant to which an applicant seeking to take advantage of the 'trademark prosecution highway' may express its wish to obtain a decision in less than six months.

The superintendence will grant an expedited registration under the condition that, if a priority claim is affected by the registration at issue, the superintendence will declare the loss of enforceability of the registration. This means that the administrative act granting the trademark registration will lose its power, and so the exclusive rights granted by the registration will not be enforceable.

An applicant may request an expedited registration at the time of filing the application, or later in a separate request. 

With this mechanism, the Superintendence of Industry and Commerce aims to reduce the time that it takes to obtain a trademark registration to an average of four months.

Margarita Castellanos, Castellanos & Co, Bogota