Wine marks finally registered by rightful owner after five-year battle

It is a common occurrence in developing countries to see unauthorised third parties or distributors of foreign products register internationally known trademarks in order to take unfair advantage of their prestige in the national market. Such was the case of renowned Australian wineries Penfolds and Rosemount in Colombia: when, in 2007, Treasury Wine Estates - the owner of the Penfolds and Rosemount brands - sought to register these marks in Colombia, it discovered that they had already been registered by the local distributor of the Penfolds and Rosemount wines, Rhocol Trading Colombia, which had also obtained health registrations for the wines before the National Health Authority (INVIMA).

In order to obtain the registration of its trademarks and the proper health registrations for the import, distribution and commercialisation of the authentic Penfolds and Rosemount wines in the country, Treasury Wine Estates sought to cancel the trademarks and health registrations owned by Rhocol. The process was slow and difficult, but Treasury Wine Estates was eventually successful thanks to the cooperation of the administrative authorities.

First, Treasury Wine Estates challenged the health registrations before INVIMA, arguing that they had been obtained without the proper authorisation. In view of this claim, INVIMA decided to cancel the registrations.

However, the proceedings for the cancellation of the trademark registrations were much more strenuous. The registrations were challenged at both the judicial and administrative level, through cancellation actions before the Trademark Office and nullity actions before Colombia's supreme administrative tribunal, the Council of State.

The judicial actions advanced at a very slow pace before the Council of State, which is known for taking over five years to take a decision. Rhocol's trademark registrations for PENFOLDS and ROSEMOUNT were concurrently challenged before the Trademark Office through a cancellation action on the grounds of non-use. At first instance, the examiner decided not to cancel the registrations on the grounds that the marks were being used by Rhocol – regardless of how they had been obtained, since a bad-faith registration can be challenged only in a nullity action. However, after examining the arguments brought forward on appeal, the Trademark Office cancelled the registrations, finding that, although Rhocol had been using the trademarks ROSEMOUNT and PENFOLDS to identify alcoholic beverages, such use was not appropriate for products of this nature in the market.

As a consequence, and after more than five years, Treasury Wine Estates' trademark applications for ROSEMOUNT and PENFOLDS - which had been suspended due to the existence of the previous registrations owned by Rhocol - were resumed and finally granted to their rightful owner, thereby setting an important precedent for similar cases in the country.

Laura Michelsen, Fernando Triana and Grace Sutachan, Triana Uribe & Michelsen, Bogota