How to register a trademark in colombia Nisimblat Law Offices Bogota Colombia

IVÁN GIOVANNI NATERA MELO
MAY 2013
HOW TO REGISTER A TRADEMARK IN COLOMBIA
Abstract
This article explains to the general public how to register a trademark in Colombia.
It starts by clarifying several concepts as intellectual property, trademark, legal
name, trade name, goods, services and classes, in order to be able to classify the
types of trademarks and tell the reader what signs can be registered as a
trademark and what others cannot.
Then, the article shows the steps that must be followed for registering a trademark
in Colombia, identifies the rights derived from the registration and explains the
possible claims and judicial actions related to trademarks.
As there is no a thesis that must be defended with several arguments, this text is
not written as an essay. On the contrary, it is written in a guide form and in a
friendly manner to be easily understood by non-lawyers, using a question-answer
method and full of examples and images for this purpose, but including some level
of detail. For writing it, there were used the highest and most reputed references
on the subject, such as the Colombian trademarks office (Superintendencia de
Industria y Comercio) and the World Intellectual Property Organization (WIPO),
among others respectable sources.

General information about trademarks
What is the intellectual property?
The intellectual property (IP) is a legal concept referring to creations of the mind
that can be recognized with exclusive rights. It is divided in two big categories: the
industrial property, that includes inventions (patents), trademarks, industrial
designs, and geographical indications of the source, that must have an industrial
application; and Copyright, which encompass artistic and literary creations as films,
drawings, plays, musical works, paintings, sculptures, architectural designs, novels
and poems (WIPO, what is intellectual property?; Superintendencia de Industria y
Comercio).
What is a trademark?
A trademark is a distinctive sign used to identify goods or services in the market as
coming from a particular source, which can be an individual, an enterprise or any
other legal entity. They are used to claim rights of use and properties of goods and
services. The main characteristic a trademark must have to be registered is the
distinctiveness, which implies that the sign has the ability to distinguish the goods
of services from those provided or produced by other individuals or companies. It is

an intangible asset that can reach a value even higher than the physical assets of
a company (Intellectual Property Office, 2013).
What is the difference between a trademark and other types of protection?
There are some concepts related to trademarks that use to generate confusion,
and it is important to clarify them all.
The company name or legal name is the name of the entity owing a business. In
the case of corporations, the legal name will often have an ending depending on
the type of company, such as Ltda, SA or SAS. This name must be used in official
matters such as filling tax returns, buying properties or signing agreements.
Examples of legal names are Ecopetrol SA, Grupo Modelo SAB de CV.
The trade name, trading name or business name, is the name a business uses
for sales and advertising purposes, and may be the same as the legal name, but
may not contain the legal ending such as Ltda or SA. It is the name often seen by
the general public on signs or internet. An individual or company can have several
trade names to identify different business activities, but the registration of a
business (obtaining a legal name) does not imply the right over the trade name,
which is obtained only by the continuous use of it in trade activities. A trade name
can also be a trademark, but the trade name is not by itself a form if intellectual
property. The main difference between a trade name and a trademark is that the

former identifies the individual or company, while the latter distinguishes the good
or service.
Examples of trade names are Kodak for the company whose legal name is
Eastman Kodak Company, Bayer for the company whose legal name is Bayer AG
and Coca-Cola for the company whose legal name is The Coca-Cola Company
(Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria y
Comercio, 2008; Gallegher & Dawsey, 2010).
What is a good and what is a service?
A good is anything that can be made for consuming and investment, and can be
offered in the market to satisfy a want or a need. On the other hand, a service is
an intangible and identifiable activity that can be offered and is the main object of a
commercial transaction aimed to satisfy a want or a need. For trademark purposes,
goods and services are classified in classes (Ministerio de Comercio, Industria y
Turismo and Superintendencia de Industria y Comercio, 2008).
What is a class of goods and services?
A class is a term used to identify a group of related goods or services that can be
offered in the market. They are grouped in 45 different classes (34 for goods and
11 for services) according to the “Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the registration of marks”

that resulted from the Diplomatic Conference held in 1957 in Nice, France. It is
currently used by approximately 148 countries, including Colombia, where the
Agreement was adopted by the article 151 of Andean Community of Nations’
Decision 486, 2000.
For example, class 33 (goods) encompass alcoholic beverages, except beers, and
under class 36 (services) are classified insurance, financial, monetary and real
estate affairs.
Source: www.sodahead.com Source: www.aig.com.co
(World Intellectual Property Organization; Ministerio de Comercio, Industria y
Turismo and Superintendencia de Industria y Comercio, 2008; Nice Agreement
Concerning the International Classification of Goods and Services for the Purposes
of the registration of marks, 1957).
What types of trademarks exist?
Trademarks are classified in three different categories, by the type of sign, by the
function of the sign and by the use and diffusion.

A) By the type of sign:
1) Nominal trademark: It is a sign that consists in more than one letter, word,
number, phrase or combinations that can be read and pronounced.
Example: The word “Apple”.
2) Figurative trademark: Is a sign made up by an image, and can include or not a
concept related to it.
Example: The shape of the bitten apple.
Source: www.apple.com
3) Mixt trademark or semi-figurative trademark: Combines one or more nominal
elements with one or more figurative elements.
Example: The bitten apple with the word “Apple”

Source: www.apple.com
4) Tridimensional trademark: Consists of a particular shape that can distinguish
one product from others.
Example: The particular shape of the Coca-Cola bottle.
Source: (Ministerio de Comercio, Industria y
Turismo and Superintendencia de Industria y Comercio, 2008).

5) Sound trademark: The goods or services are identified by a particular sound
that is represented graphically in a pentagram or a sonogram.
Example: McDonald’s Corporation’s 5-note “I’m lovin’ it” jingle.
Source: http://www.youtube.com/watch?v=eBlD2N_AwgI
B) By the function of the sign:
1) Commercial trademark: These are the most common type of signs, and are the
ones who identify goods or services from a specific individual or company in the
market.
Examples: Apple, Coca-Cola, Alpina.
Source: www.alpina.com.co
2) Collective trademark: They are owned by organizations (such as corporations,
institutions or collectivities) and identify goods and services with different business
origin but that share common characteristics, such as the materials, the way of
production or the level of quality. The main feature of this type of trademarks is that
it is used as an indication that some goods or services are provided from a
member of the owner organization.
Examples: Rones de Guatemala.

Source: industriaslicorerasdeguatemala.com/rones-de-
guatemala
3) Certification trademarks: The main characteristic of certification trademarks is
that it is not used by the owner but by the authorized users for guaranteeing to the
general public that the distinguished goods and services have particular
characteristics and qualities.
Examples: Icontec, Sello Ambiental Colombiano.
Source: www.icontec.org.co
C) By the use and diffusion:
1) Common trademark: They refer to a particular class of goods or services
according to the International Classification of Nice, and are known among the
public to which they are directed.

Examples: Alpina, Ramo.
Source: www.alpina.com.co
2) Notorious trademark: It is a trademark that is known by an important part of the
public that consumes a particular group of goods or services. It has a wider
protection than a common trademark, reaching products and services not
protected specifically by the trademark, breaking the specialty principle. The
protection of a notorious trademark can pass international borders. Another
important effect is the stricter analysis of the likelihood of confusion that has to be
done to every registration application.
Examples: Nike (for sports goods and services consumers), vogue (for cosmetic
consumers).
Source: www.nike.com
3) Renowned trademarks: It is an extension of the concept of notorious
trademark, due to the higher knowledge of the renowned trademark for the general

public, while the notorious trademark is only known by a particular group of
consumers. As well as the notorious trademark, a renowned trademark implies a
stricter likelihood confusion analysis of similar registration applications.
Example: Coca-Cola (probably the best example of a worldwide known trademark).
Source: www.coca-cola.com.co
Comercio, 2008).
What can be registered as a trademark?
A trademark can consist of words, numbers, letters, drawings, images, forms,
colors, figures, logotypes, symbols, graphics, monograms, sounds, smells or
combinations of these elements, and any other sign that can be represented
graphically (Ministerio de Comercio, Industria y Turismo and Superintendencia de
Industria y Comercio, 2008).

What cannot be registered as a trademark?
The Andean Community of Nations’ Decision 486, 2000 includes several
restrictions for signs to be registered as a trademark, and that can be classified as
follows:
1) Lack of distinctiveness.
2) Descriptiveness. For example, if a producer of beer wants to register the
trademark “BEER”, it would be refused.
3) Reproduction of common or natural shapes, consists of generic or technical
names of the goods or services, common colors, etc.
4) Contrary to the law, the moral or the public order. For example, if a figurative
trademark consists on explicit sexual images, it must be refused.
5) Identical or very similar to a registered trademark or to a sign in process of
registration, if it aims to distinguish the same goods or services, or related ones.
6) Is identical or very similar to a notorious trademark, even if it aims to identify
other type of goods or services.
(Intellectual Property Office, 2013; Decision 486, 2000 Andean Community of
Nations).

Which is the trademarks office in Colombia?
The trademarks office in Colombia is the “Superintendencia de Industria y
Comercio”, commonly known as SIC. It is also the official entity that controls the
rest of the Industrial Property registration and rights, as patents and industrial
designs, and the competence and consumer law. It has its principal office in
Bogotá.
Which is the process to register a trademark
in Colombia?
There are several steps that must be followed carefully in order to register a
trademark in Colombia and be successful.
1) Previous steps: Before making the application, it is important to
a) Choose the distinctive sign, regarding the information given above about what
can and cannot be registered as a trademark.
b) Identify the class of goods or services the trademark aims to identify, according
to the International Classification.
c) Look for identical or similar signs. This can be done online in this link
(http://sipi.sic.gov.co/loader.php?lServicio=SignosDistintivos&lTipo=consultas&lFu

ncion=signosDistintivos) or can be made by the trademarks office for an additional
cost in a no biding report.
d) Fill the form, that can be obtained for free in the customer service office of the
SIC or in its website (www.sic.gov.co). This form must be filled with the following
information:
- The type of distinctive sign: Commercial trademark, collective trademark, etc.
- The applicant’s information: Name, identification (for an individual or a company),
address.
- Legal representative.
- The sign pretended to register and its type (nominal, figurative, etc).
- Class of goods or services aimed to be identified by the trademark.
- Payment voucher for the corresponding cost.
- Proof of legal existence (in the case of companies).
- Power of attorney.
2) Apply: An application date and serial number is allocated; the former will permit
the applicant to verify online the process.
The application date is important due to the preference of earlier applications in
case of similar trademarks.

3) Form examination: The SIC will verify if the form has been filled properly and if
the attached documents are complete and correct. In case there is a mistake, the
SIC will give a 60 day period to the applicant to complete or correct the application
form.
4) Publication: If the application form fulfills the requirements, it is published for
one time in the Intellectual Property Gazette containing the main information about
the sign and the applicant.
5) Opposition: Any party who believes it may be damaged by the registration of
the trademark must present opposition during the next 30 days following the
Publication, filling a special form for that purpose.
This SIC will make a form examination of the opposition, and if it is admitted, will
give 30 additional days to the applicant to be able to defend himself.
6) Examination: No matter if there are oppositions or not, the SIC will make a
complete examination to determine if the sign can be registered as a trademark.
There can be two possible decisions: approval or refusal. In the first case, the SIC
will issue a registration certificate.
Any party that does not agree with either decision has a period of 5 days to present
the motion of reversal addressed to the Distinctive Signs Division’s Chief and of
appeal to the Delegated Superintendent for Industrial Property. These two
consecutive actions are known as “Vía Gubernativa” in the Civil Law countries,
where exist a jurisdiction called “Jurisdicción Contencioso Administrativa” that
takes part in every judicial process in which the State is a party.

Comercio, 2008).
What is the cost of registering a trademark in Colombia?
The costs for the application for the registration of a trademark in Colombia for the
current year (2013) are the following:
- COP$750 000 for registering a trademark of products and services in one class.
- COP$1’000 000 for registering a collective or certification trademark.
Other related costs can be consulted in the cited resolution, which is updated
yearly.
Comercio, 2013).
Which rights are derived from the trademark registration?
The rights over the registration have a protection in the Colombian territory, and
are the following:
1) Right to use: The owner of the registered trademark can introduce,
commercialize, import, export, transport and sell the goods or services identified by
the trademark.

2) Indirect use: The owner can also sign agreements authorizing another party to
use the trademark. This is made by means of a user license that has two options:
a) Exclusive license.
b) Non-exclusive license.
3) Disposal rights: The owner of a trademark can sell it to a third party.
4) Prohibition rights: The owner of a trademark can prevent someone else to use
it in a wrongful way.
Comercio, 2008).
Which is the lifetime of those rights?
The conceded registration has a lifetime of ten (10) years counting from the date
the certificate was conceded. It can be renewed indefinitely for
successive periods of ten years (Ministerio de Comercio, Industria y Turismo and
Superintendencia de Industria y Comercio, 2008).
Which are the legal proceedings?
The owner of a trademark may commence legal proceedings against a party that
has presumably infringed the rights derived from a trademark registration.

1) Opposition: As was explained in the registration process, the opposition is the
opportunity that a person has to prevent the registration of a trademark. It can be
presented by the owner of a similar trademark or by any other person in case the
sign is contrary to law.
2) Cancel of registration: It is a proceeding directed to terminate the rights of
registration and can be initiated by any person when without justified reason the
trademark has not been used in at least one of the members of the Andean
Community of Nations.
3) Only the owner of a trademark can initiate judicial actions if someone else has
infringed his rights. The judge having jurisdiction is the civil circuit court of the
city where the respondent has its domicile.
4) Annulment of an administrative act: The annulment of an administrative act
can be requested to the Consejo de Estado having previously used the Vía
Gubernativa (an institution and a proceeding owned by the Civil Law system).
Comercio, 2008).

REFERENCES:
Alpina Colombia. Retrieved May 30, 2013 from www.alpina.com.co
American International Group. Retrieved May 30, 2013 from www.aig.com
Andean Community of Nations. Decision 486, 2000.
Apple. Retrieved May 30, 2013 from www.apple.com
Coca-Cola Colombia. Retrieved May 30, 2013 from www.coca-cola.com.co
Gallegher & Dawsey (2010). Understanding trademarks. Key differences between
legal names, trade names and trademarks. Retrieved May 29, 2013 from
http://www.invention-
protection.com/ip/publications/docs/Legal_Name_Trade_Name_Trademark.
html
Industrias Licoreras de Guatemala. Retrieved May 30, 2013 from
industriaslicorerasdeguatemala.com/rones-de-guatemala
Instituto Colombiano de Normas Técnicas y Certificación. Retrieved May 30, 2013
from www.icontec.org.co
Intellectual Property Office (2013). What is a trademark (or brand)? Retrieved May
29, 2013 from http://www.ipo.gov.uk/types/tm/t-about/t-whatis.htm
Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria y
Comercio (2008). Marcas.

Ministerio de Comercio, Industria y Turismo and Superintendencia de Industria y
Comercio. Resolución 173 de 2013.
Nice Agreement Concerning the International Classification of Goods and Services
for the Purposes of the registration of marks (1957). Retrieved May 29, 2013
from
http://www.wipo.int/export/sites/www/treaties/en/classification/nice/pdf/trtdoc
s_wo019.pdf
Nike. Retrieved May 30, 2013 from www.nike.com
Soda Head. Retrieved May 30, 2013 from www.sodahead.com
Superintendencia de Industria y Comercio. Marcas. Retrieved May 29, 2013 from
http://www.sic.gov.co/es/marcas
World Intellectual Property Organization (WIPO). What is intellectual property?
Retrieved May. 29, 2013 from http://www.wipo.int/about-ip/en/
World Intellectual Property Organization (WIPO). Trademarks. Retrieved May. 29,
2013 from http://www.wipo.int/trademarks/en/trademarks.html

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