Trademark Office provides certainty to famous mark enforcement

Colombia

Following the implementation in Colombia of Andean Community Decision 486 on a Common Intellectual Property Regime, the national Trademark Office has specified the criteria needed to assess the fame of a trademark for national enforcement purposes.

The former IP legislation of the Andean Community, which was implemented in Colombia in 1978, led to contradictory decisions because it only requested that fame be demonstrated in the mark's country of origin, without specifying the evidence that was required.

The new legislation, as interpreted by the Trademark Office, clearly defines the evidence to be submitted to the Trademark Office to prove a mark's fame. This includes either (i) a survey showing the extent of the mark's fame in the relevant sector and the extent of the sign's distinctiveness in one of the Andean Community member states, or (ii) an affidavit by the mark owner's auditor showing:

  • the extent of the mark's use and fame, including how long and where it has been used;

  • the extent of the efforts made to promote the mark and the value of all investments made in promoting it;

  • sales figures in Colombia and at the international level for goods and services incorporating the mark;

  • the book value of the mark as a corporate asset;

  • documentation showing the number of parties interested in obtaining a mark franchise or licensing the mark for a specific territory;

  • the existence of significant manufacturing, purchasing or storage activities by the mark's owner in Colombia; or

  • the registration, or application for registration, of the mark in an Andean Community member state or any other country.

Beatriz Jaramillo, Brigard & Castro, Bogota

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