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Colombia

Five counterfeit hotspots you must be aware of in Colombia

Our series highlighting markets that reportedly engage in the trade of counterfeit goods continues with Colombia. We look at why the Latin American nation is a challenge for rights holders tackling fake goods and identify key locations to police. 

Five counterfeit hotspots you must be aware of in Colombia
25 Jul 2019

Non-traditional marks in Latin America: close-up on Colombia

The acceptance of non-traditional trademarks has increased in most Latin American jurisdictions in recent years. We provide an overview of the current state of play in Colombia.    

25 Jun 2019

Amazon TLD back in limbo as governments rail against e-commerce giant and ICANN

Amazon’s application for the ‘.amazon’ TLD is back on hold after the Colombian government lodged a request for ICANN to reconsider its decision to proceed with the applications. 

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6 Dec 2019

Providence Island black crab protected as denomination of origin

The black crab of the Island of Providence has been granted protection as a denomination of origin by a decision of the Superintendence of Industry and Commerce. It is the first time that a product of the Colombian archipelago of San Andrés, Providence and Santa Catalina has received such protection.  Read more

12 Sep 2019

AUDI v AUDITRAINING: misunderstanding the concept of dilution of notorious trademarks

In opposition proceedings filed by Audi AG against the registration of the mark AUDITRAINING in Class 41, the National Trademark Office of Colombia has arguably misunderstood the concept of dilution of notorious trademarks. Read more

12 Jun 2019

Success for Crocs as defendant is found to infringe 3D mark for shape of Crocs shoes

Colombia’s Superintendence of Industry and Commerce has found that Evacol SAS infringed Crocs Inc’s 3D mark for the shape of its Crocs shoes by commercialising shoes of a confusingly similar shape. Read more

12 Mar 2019

Injunction granted for colour mark even though shape is different

A tribunal has granted Nestlé’s request for injunctive measures over a competitor’s packaging, which uses a similar shade of green to its registered colour mark. This was despite the fact that colour marks in Colombia are limited to particular shapes. Read more

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Brand management

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29 Oct 2018

Amazon TLD moves forward but work remains before ‘.amazon’ becomes a reality

The ICANN board has decided that Amazon’s application for the ‘.amazon’ TLD should be moved from the ‘will not proceed’ designation, paving the way for future delegation of a string that has been in limbo for five years.  Read more

Enforcement and litigation

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12 Sep 2019

AUDI v AUDITRAINING: misunderstanding the concept of dilution of notorious trademarks

In opposition proceedings filed by Audi AG against the registration of the mark AUDITRAINING in Class 41, the National Trademark Office of Colombia has arguably misunderstood the concept of dilution of notorious trademarks. Read more

12 Jun 2019

Success for Crocs as defendant is found to infringe 3D mark for shape of Crocs shoes

Colombia’s Superintendence of Industry and Commerce has found that Evacol SAS infringed Crocs Inc’s 3D mark for the shape of its Crocs shoes by commercialising shoes of a confusingly similar shape. Read more

9 Jul 2018

easyGroup versus EasyFly: not an 'easy' case

easyGroup, which is currently engaged in litigation against Colombian airline EasyFly, has failed to comply with an injunction in trademark infringement proceedings initiated by EasyFly. Read more

27 Oct 2017

The power behind notoriety

The CTO recently denied registration of the trademark MONSIEUR PERRUNÉ for confusing similarity to MONSIEUR PERINÉ. Although the latter was not a registered mark, the CTO found that, due to its notoriety, the MONSIEUR PERRUNÉ mark would diminish its distinctive force and commercial value. Read more

IP offices

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1 Nov 2018

New option available to reduce time between filing and publication of trademark applications

A new option is available in Colombia to reduce the prosecution time of trademark applications. In certain circumstances, it is now possible to skip the formal examination of the products/services covered by the application prior to its publication. Read more

Portfolio management

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2 Mar 2017

Trademark Office registers colour orange for bakery products

The Trademark Office has registered the colour orange for cakes, biscuits and pastries in the name of Productos Ramo SA, finding that the colour was sufficiently distinctive to allow consumers to associate it with a specific commercial origin. Although Andean legislation establishes that only a “colour delimited by a shape” can be registered as a trademark, the decision shows that the office has become more and more flexible with regard to the shape provided with the application. Read more

Trademark law

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24 Jul 2018

“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

​​​​​​​Law firm practitioners in jurisdictions that have adopted the Madrid Protocol in recent years have shared their experience in an exclusive survey. While some praised the system, other were scathing about its impact. Read more

9 Jul 2018

easyGroup versus EasyFly: not an 'easy' case

easyGroup, which is currently engaged in litigation against Colombian airline EasyFly, has failed to comply with an injunction in trademark infringement proceedings initiated by EasyFly. Read more

21 Mar 2018

Trademark Office clarifies when applications may be modified – what applicants need to know

The Colombian Trademark Office has published an article clarifying when and to what extent it will be possible to amend a trademark application. Read more

27 Oct 2017

The power behind notoriety

The CTO recently denied registration of the trademark MONSIEUR PERRUNÉ for confusing similarity to MONSIEUR PERINÉ. Although the latter was not a registered mark, the CTO found that, due to its notoriety, the MONSIEUR PERRUNÉ mark would diminish its distinctive force and commercial value. Read more

trending

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Providence Island black crab protected as denomination of origin

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Five counterfeit hotspots you must be aware of in Colombia

3

Amazon TLD back in limbo as governments rail against e-commerce giant and ICANN

4

“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

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The power behind notoriety

latest

1

Providence Island black crab protected as denomination of origin

2

AUDI v AUDITRAINING: misunderstanding the concept of dilution of notorious trademarks

3

Success for Crocs as defendant is found to infringe 3D mark for shape of Crocs shoes

4

Injunction granted for colour mark even though shape is different

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Lisa M Tittemore
Partner
Boston MA, United States
Sunstein Kann Murphy & Timbers LLP
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