Importer cannot use its own mark to identify imported goods

Colombia

The Colombian Trademark Office (TO) has stated that an importer cannot use its own registered trademark to identify products manufactured by a third party (Case 04072608, August 31 2004).

The statement came in response to a question brought before the TO by an individual named John Jaime Rodríguez Restrepo, an importer of various types of goods. Restrepo asked whether (i) it is necessary to register and use the trademark of the manufacturer of an imported product sold in Colombia, or (ii) the product can be sold under the registered trademark of the importer if the manufacturer's name and the origin of the product are clearly displayed.

The TO held that, pursuant to Article 135(i) of Andean Community Decision 486 on a Common Industrial Property Regime, the use of a trademark registered by an importer to identify products manufactured by a third party is:

"liable to create confusion in business circles or the public, in particular as to the geographical origin, nature, manufacturing methods, characteristics, or qualities of the goods or services concerned, or their suitability for use."

It concluded that an importer's trademark cannot be registered to cover imported products, if they are not manufactured by the importer. Such an application, said the TO, would deceive consumers.

However, in the author's opinion, the decision is erroneous. It is unlikely that an imported product bearing the trademark of an importer will deceive consumers where the name of the manufacturer and the origin of the product are clearly stated. It is true to say that this situation may cause problems in certain circumstances but such problems are unlikely to relate to registration with the TO. Rather, the use of an importer's mark on a third party's goods may cause tensions in the relationship between that party and the importer (eg, it may constitute the breach of a distribution contract).

Ximena Castellanos, Alvaro Castellanos M & Cia, Bogota

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