U-turn on registrability of similar marks by companies of same group

The Council of State has issued a resolution stating that companies belonging to the same group are allowed to register similar trademarks.

Under the Trademarks Office's previous policy, similar trademarks registered in the name of different companies belonging to the same group could not coexist in the register. The office considered that although companies belonging to the same group have a common purpose, they are separate legal entities with different rights and duties. The office was thus of the opinion that the coexistence of similar trademarks in the name of different companies was liable to cause confusion among consumers. Consequently, only one company of the group was allowed to register and own similar trademarks.

However, the Council of State has now decided that companies belonging to the same group may register similar trademarks provided that the owner of the registered trademark consents to it. The council considered that this would not mislead consumers as to the origin of the products, as the companies are part of the same group and have a common purpose.

The Trademarks Office is bound by the resolutions of the council and must now change its policy.

Margarita Castellanos, Castellanos & Co, Bogota