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Messi granted trademark in Colombia; Amazon counterfeit lawsuit; brands no longer fear Trump – news digest

In our latest round-up, we look at the NCPC and IPR Center teaming up to fight fake vapour products, the Brazilian IPO granting the first geographical indications to indigenous people, and much more.

10 Aug 2020

Trademark damages: exploring the ever-evolving global dichotomy between civil and common law

Considering the approach to damages in the United States and Colombia, civil and common law systems appear to be moving together, rather than apart, meaning that rights holders can expect more multi-faceted, holistic decisions, which attempt to right the wrong done.

18 May 2020

ICANN seeks to draw line under Amazon ‘.brand’ spat with South American governments

Göran Marby, president and chief executive officer of ICANN, has written a communication which seeks to draw a line under an eight-year battle that has raged over Amazon’s application for its ‘.brand’ top-level domain.

Latest

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15 Sep 2020

Limitation of product description in trademark registration following non-use cancellation action

Colombia’s Trademark Office has recently clarified the interpretation of Article 165 of Andean Community Decision 486 concerning the coverage of a trademark registration following a cancellation action on the ground of non-use. Read more

3 Sep 2020

Novartis obtains cancellation of GSK’s trademark on ground of non-use

In a victory for multinational pharmaceutical company Novartis AG, the Colombian Trademark Office has ordered the cancellation of a trademark owned by GlaxoSmithKline, finding that it had not been used in the relevant class. Read more

8 Jul 2020

Defending against bad-faith applications in the Andean region

Protecting brands against parasitic trademarks can raise numerous challenges in Bolivia, Colombia, Ecuador and Peru – but there are ways to overcome them. Read more

10 Jun 2020

Impact of covid-19 pandemic on IP practice in Colombia

While the Patent and Trademark Office of Colombia reopened on 1 April 2020 following a short closure, the situation is very different for the judicial system. Read more

Anti-Counterfeiting

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2 Jan 2020

Twenty counterfeiting hotspots to be aware of in Latin America

Although Asia is often seen as the centre of global counterfeiting activity, sales of fake goods are rising across Latin America. We present 20 markets in the region that are particularly problematic for brand owners. Read more

19 Aug 2019

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. Read more

1 Mar 2016

Border protection in Latin America – the future looks brighter

Despite the region’s reputation as a haven for counterfeiters, several Latin American countries are making significant strides in developing and using highly effective anti-counterfeiting tools

26 Oct 2005

Border measures decree under study but support not unanimous

A decree regulating the procedure for border measures in relation to
IP rights enforcement is under consideration. The proposed decree would provide
a new procedure for customs to suspend the importation or exportation of any
suspected counterfeit or pirated goods. Detractors claim that the decree does
not add anything to existing provisions.

Brand management

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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

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. Read more

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

13 Feb 2012

Possibility of filing multi-class applications introduced

The Colombian government has issued Decree 19 of January 10 2012, which removes unnecessary administrative formalities and proceedings. Among other things, the decree provides that no party may require the attestation, authentication, legalisation or other certification of any signatures in documents filed with the Trademark Office. Moreover, applicants will be able to file multi-class applications.

Enforcement and Litigation

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23 Apr 2020

Leading television network successfully protects well-known mark for reality show

In a controversial decision, the Colombian Trademark Office registered the mark DESAFÍO DE GUERREROS despite the existence of television network Caracol’s well-known mark DESAFÍO. Caracol thus had to think outside the box to protect its mark. Read more

9 Mar 2020

Trademark representing geographical landmark refused registration

The National Trademark Office of Colombia has refused to register a mark consisting of the name and graphical representation of a Colombian geographical landmark in Classes 35, 36, 39 and 41 on the ground of descriptiveness. 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

Government/Policy

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18 Feb 2020

WIPO director general elections: Colombian nominee Marco M Alemán exclusive interview

We speak to Colombia's candidate for the WIPO director general position, Marco M Alemán, who explains how his expertise and intimate understanding of WIPO’s inherently multilateral ethos make him the ideal candidate for the job. Read more

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. Read more

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.

2 Aug 2012

New Procedural Administrative Code should benefit trademark owners

Colombia has recently issued a new Procedural Administrative Code, which introduces significant changes to the procedural stages that are relevant to trademark prosecution in the country. Among other things, the deadline to file appeals against administrative decisions, such as those issued by the Colombian Patent and Trademark Office, has been extended.

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

27 Jul 2016

The new Virtual Office of Industrial Property

The Colombian Patent and Trademark Office have implemented a new modern and innovative platform for the online filing and management of distinctive signs, patents and certifications of industrial property.

25 Jan 2013

National Patent and Trademark Office reduces official fees by up to 90%

Following a programme of 'democratisation of industrial property', the National Patent and Trademark Office has issued a new table of reduced official fees. Colombian artisans will benefit the most, with a 90% reduction in trademark application fees. The new fees entered into force on January 1.

16 Feb 2010

Increased trademark fees come into force

By means of Resolution 69699, the Colombian Trademark Office has increased the official fees for industrial property proceedings, including trademark matters. While some fees were raised by only 2.6%, some proceedings have become significantly more expensive. The new fees are effective as of January 1 2010.

Online

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8 Nov 2013

'.co' registry releases European IDNs

.CO Internet SAS, the registry managing the ccTLD for Colombia, has announced the launch of European IDNs in the ‘.co’ domain name space. The launch includes the special characters used by the Russian, German, French, Portuguese, Polish, Latvian, Lithuanian and Hungarian languages.

10 Jul 2013

1,100 two-character '.co' domain names for sale

The registry managing ‘.co’, the ccTLD for Colombia, has announced the listing of its two-character ‘.co’ domain name portfolio for purchase with the registrar GoDaddy. The aim of listing these domain names seems to be two-fold: raising the profile of ‘.co’ domain name registrations while, at the same time, encouraging small to medium-size businesses to acquire a short and "highly brandable” domain name.

25 Feb 2013

'.co' still going strong

.CO Internet SAS, the registry managing ‘.co’, the ccTLD for Colombia, has revealed impressive statistics for the year 2012. The number of ‘.co’ domain names increased by nearly 24.4% from 2011 to 2012 - a significant growth rate, especially in view of the overall TLD growth rate of 12% and ccTLD growth rate of 20.7%.

18 Oct 2010

Disputes involving '.co' domain names on the rise

There has been an increasing number of disputes arising from the registration of domain names under the ccTLD '.co'. Less than two months after the liberalisation of the '.co' extension, half a million domain names had already been registered. Most of the complaints are a direct consequence of the perception that the opening of the '.co' extension represented an opportunity to make easy and fast money.

Portfolio Management

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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.

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.

1 Jun 2017

Ancient ‘Jaguar Man’ design protected by National Trademark Office

AESCO EXPRES INTERNACIONAL SAS filed a trademark application for AESCO COLOMBIA and design covering services in international Class 45. The design included the figure of the ‘Jaguar Man’, which is a pre-Colombian symbol of the ancestral belief that all earth species were human beings with different relationships to the cosmos.

30 Mar 2017

Krispy Kreme scores sweet victory in nullity action

In a nullity action filed by the owners of the word mark KROSPY against the figurative mark KRISPY KREME, the Council of State has found that there were no visual, phonetic or conceptual similarities between the marks and that, therefore, the registration for KRISPY KREME had been duly granted. This case demonstrates the speediness and usefulness of such proceedings since the applicable legislation was modified in 2012.

Trademark law

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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.

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.

26 Jul 2016

Colombian Trademark Office breaks new ground for non-traditional trademarks

The Colombian Trademark Office has granted the first-ever tactile trademark registration for the surface of the Old Parr bottle to identify “alcoholic beverages (except beers)”.

8 Feb 2016

TODO BIEN mark not distinctive, but does not take unfair advantage of Valderrama’s reputation

Famous Colombian football player Carlos <i>‘el Pibe’</i> Valderrama filed an opposition against the application to register the trademark TODO BIEN for “Soft drinks and energizing drinks” in Class 32.

Twitter

31 Oct 2020

@WTRmagazine RT @WTRmagazine: USPTO responds to concerns over ‘Trump leadership’ social media messages. https://t.co/w9XvPfQKu5 #Election2020 https://t.… Read more

30 Oct 2020

@WTRmagazine RT @SidemanBancroft: A report from the World Trademark Review predicts that trademarks teams face enforcement challenges in the coming mont… Read more

30 Oct 2020

@WTRmagazine USPTO responds to concerns over ‘Trump leadership’ social media messages. https://t.co/w9XvPfQKu5 #Election2020 https://t.co/J8JmdB2xsi Read more

29 Oct 2020

@WTRmagazine RT @MarksmenTweets: #WHOIS, the RPM review and future gTLD rounds: takeaways from #ICANN69 | More via @WTRmagazine https://t.co/bf7USCmwcO… Read more