Trademark owners should be aware of importance of health registrations
In Colombia the import, export and distribution of pharmaceutical, cosmetic, food and cleaning products, among others, require not only that the trademark under which the goods are sold be registered, but also that a health registration be obtained. This is not usually taken into account by trademark owners wishing to enter the Colombian market: they request only an availability search regarding their trademark, but disregard the importance of carrying out a background search for a health registration. Moreover, trademark owners should be aware that disloyal distributors commonly take advantage of their market and legal knowledge to exploit the manufacturer's rights.
This was the case of an Australian wine manufacturer, which had hired a distributor to commercialise its wines within the Colombian territory. After a while, the distributor obtained both trademark registrations and health registrations in its own name, but without the manufacturer's consent. As it had failed to oversee the distributor's actions and neglected to obtain health registrations, the manufacturer had to fight for years to reclaim its rights and finally enter the Colombian market.
The facts were as follows. In June 2005 the distributor applied for the registration of the manufacturer's trademarks. The applications were a copy of the manufacturer's marks, which were registered in the United States. Unfortunately, the manufacturer received notice of the distributor's trademark applications only when it was too late to file an opposition. In January 2006 all trademarks applied for were granted. When the manufacturer sought to register its trademarks, it discovered that they were already owned by the distributor, and it filed for a nullity action against the trademark registrations. Such proceedings usually take five to eight years. On July 2010 the manufacturer decided to file a cancellation action for non-use against the distributor's trademarks. The trademarks were finally cancelled for non-use on August 2012.
Additionally, in 2005 the distributor, without the authorisation of the manufacturer, filed a request before the Colombian Health Authority to obtain health registrations for the manufacturer’s products that it distributed within the Colombian territory. Once the distributor had obtained the health registrations, the manufacturer was prevented from entering the Colombian market.
Following five years of legal action before the Colombian Health Authority, the brand owner obtained a favourable outcome, and the health registrations granted in favour of the distributor were cancelled. The brand owner can now apply for new health registrations. This case is significant in that it is the first time that the Colombian Health Authority has cancelled a health registration.
Carolina Díaz & Sandra Ávila, Triana Uribe & Michelsen, Bogota
Triana Uribe & Michelsen acted for the brand owner in this case
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