Viasat opposes mark based on Paris Convention priority


In Viasat Inc v Sociedad Telefónica SA, the Trademark Office has permitted Viasat's opposition to Telefónica's application to register 'Viasat Corporativo' as a trademark in Colombia on the grounds that Viasat had already applied to register the same mark in another signatory state to the Paris Convention for the Protection of Industrial Property.

In November 2000 Telefónica filed an application with the Colombian Trademark Office to register the term 'Viasat Corporativo' as a trademark. However, the previous month, Viasat had applied to register the same mark in Australia. In February 2001 Viasat filed an opposition to Telefónica's registration of the mark in Colombia, based on its earlier filing. Viasat declared in its opposition that it would apply to register the mark in Colombia claiming Australian priority.

With Resolution 41117, the Trademark Office ruled that Telefónica's application must be rejected. As Colombia and Australia are both signatories to the Paris Convention, Viasat's filing date abroad can be used as the filing date in Colombia for opposition purposes.

This is the first time the Trademark Office has recognized that priority rights granted by the Paris Convention may be used to oppose trademark registrations in Colombia.

Beatriz Jaramillo, Brigard & Castro, Bogota

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