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Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

A power of attorney signed by the applicant is required. Neither notarisation nor legalisation is required (unless the document’s validity is questioned by the Colombia Trademark Office (CTO), in which case these may be required). The filing of a scanned copy of a signed power of attorney will suffice.

What information and documentation must be submitted in a trademark registration application?

A trademark application must include the following information and documents:

  • the CTO filing form, which must include:
    • the applicant’s name and address and nationality or domicile;
    • an indication of the mark to be protected;
    • the mark’s type;
    • a description of the goods or services and the corresponding class of the International Nice Classification of Goods and Services; 
  • a reproduction of the mark, if it is:
    • a word mark featuring graphic elements, shapes or colours;
    • a figurative or design mark; or
    • a composite or three-dimensional mark with or without color;
  • the power of attorney;
  • proof of payment of the official fees; and
  • where priority is claimed, the registration certificate of the country of origin (issued by the authority that granted it) or a certified copy of the trademark registration on which the priority claim is based.

What rules govern the representation of the mark in the application?

The main rules that govern the representation of marks in Colombia are as follows:

  • The standard characters used by the CTO, for the registration and publication of distinctive signs, are Arial, Arial Narrow and Times New Roman.
  • Where a mark includes graphic elements (ie, marks with a design), the application must include one reproduction of the mark in JPG format (maximum size of 450 x 450 pixels and 2MB) in colour (if colours are claimed) or black and white.
  • Where the applicant of a composite, figurative, design or three-dimensional mark wishes to claim the colour as a distinctive characteristic of the mark, it must declare it and indicate the colour or colours to be claimed and their location within the sign, describing the colour or using a colour code system (eg, noting the corresponding Pantone).
  • For three-dimensional marks, the mark’s reproduction must consist of a two-dimensional graphic or photographic reproduction, provided that it can sufficiently show the details of the mark. This must be provided in JPG format (maximum size of 450 x 450 pixels and 2MB). If the graphic reproduction does not meet this requirement, the applicant must provide up to six different views of the mark and a written description of the same.
  • Where a mark consists totally or partially of non-Latin characters or non-Arabic or Roman numbers, the applicant must indicate whether the trademark is figurative or a word mark. If it indicates that it is a word mark, a transliteration or translation of that content must be submitted in Latin characters or Arabic numbers.

     Are multi-class applications allowed?

Yes, multi-class applications are allowed in Colombia. An additional cost applies for each class included in an application.

Is electronic filing available?

Yes, electronic filing is available in Colombia. The CTO encourages applicants to use this service by offering a lower official fee for applications filed online.

What are the application fees?

The official fees for an online trademark application in Colombia for 2018 are set out in US dollars below (although the published fees are represented in Colombian peso):

  • an application for one mark or slogan in one class – $329;
  • an application for one mark or slogan in each additional class – $164;
  • an application for one collective certification mark in one class – $437; and
  • an application for one collective certification mark in each additional class – $219.

The CTO increases these fees annually.

Priority

How are priority rights claimed?

Priority must be claimed in the trademark application filing form. Proof of payment of the corresponding official fee must be enclosed with the application, along with the registration certificate on which the request for priority is based or a certified copy thereof. This document must be filed with the application or within three months from the application date.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches are available but not required before filing with the CTO. It is possible to request an availability search online before the CTO – the fees for which are $15 for one mark in one class and $8 for one mark in each additional class. The CTO offers official results without any legal opinion.

Examination

What factors does the authority consider in its examination of the application?

In a preliminary instance, the CTO officer will verify fulfilment of formal aspects of the application. After the application has been published for 30 working days, the CTO will conduct a substantial examination, verifying that the mark has no absolute grounds for refusal and that there is no likelihood of confusion with any prior trademark rights.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes. The CTO checks for both absolute and relative grounds and may refuse the registration of a trademark ex officio based on those grounds. The CTO searches its database in order to check that there are no prior rights for marks that may be identical or similar to an applied-for mark.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

The CTO usually returns an initial application to the applicant, requesting it to complement or clarify sections that are unclear or incomplete. These corrections are covered by the initial fee paid and once they have been made, the application will be the subject of a substantive examination by the CTO.

Can rejected applications be appealed? If so, what procedures apply?

Yes, rejected applications can be appealed. The procedure consists of filing a brief before the CTO within 10 working days from a decision’s notification. Decisions are considered to have been notified one month after the email notifying the applicant is sent.

Registration

When does a trademark registration formally come into effect?

Trademark registrations come into effect once the granting decision is final.

What is the term of protection and how can a registration be renewed?

The term of protection of a trademark in Colombia is 10 years from the day on which the granting decision is final. A renewal can be filed within the six months before its deadline or during the six-month grace period after the deadline.

What registration fees apply?

There are no registration fees once the application has been accepted for registration.

What is the usual timeframe from filing to registration?

The CTO can take between seven and nine months to review and decide a trademark application if there are no obstacles during the procedure; however, proceedings may take up to 18 months if obstacles such as office actions or oppositions are raised.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes, third parties can formally oppose any application on both absolute and relative grounds. Any third party wishing to file an opposition against an application must do so during the 30-working-day publication period.

What is the usual timeframe for opposition proceedings?

The CTO can take up to 18 months to resolve trademark applications against which an opposition has been filed.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes, opposition decisions are subject to appeal; if any of the involved parties wants to file an appeal, they must file an appeal brief before the CTO within 10 working days from the decision’s notification.

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