Colombia: New Legislation On Intellectual Property In Force In Colombia As Of December 1st 2000

The Commission of the Andean Community issued on September 14, 2000 Decision No. 486 amending by which the regime of Intellectual Property was amended (Decision 344 of 1993). This Decision, which became effective that shall enter into force on December 1, 2000 in the Andean Countries (hereinafter "Member Countries"), introduces new rules on industrial property rights that are in accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights (ADPICTRIPS). This treaty establishes the minimum requirements for the protection of intellectual property rights.

In this article we have summarized the new principalsprinciples introduced by this Decision, as well as the main points of this Decision on tTrademarks:

Decision 486 introduces the principles of "National Treatment and Most Favored Nation Treatment" regarding the protection of Industrial Property. Thus, each Member Country shall accord to the nationals of other Member Countries, WTO countries, and Paris Convention signatory countries, treatment no less favourable than that accordeds to its own nationals.

Likewise, any advantage, favour, privilege or immunity granted by a Member Country to itsthe nationals shall be accorded immediately and unconditionally to the nationals of other Member Countries, WTO Countries and Paris Convention signatory countries.

Decision 486 establishes that the protection ofto the Industrial Property Rights shall be extended to safeguard given safeguarding the biological and genetic assets, as well as the traditional knowledge of the indigenous, Afro-American and local communities.

• Article 134 of Decision 486 lists the , which signs which can be considered as trademarks, establishing explicitly that sounds, smells, and colors (that are limited by a form,) can be trademarks, among others.among other signs can be trademarks.
• Pursuant to Article 135 of Decision 486, the signs that have become generic signs can not be registered as trademarks. However, an exception is made when the applicant has been using constantly the sigsign and because of its use the marksign has become distinctive. This article applies the theory of the Secondary meaning.
• Pursuant to Article 136, literal d) of Decision 486, it can not be registered as a trademark any sign filed by a distributor of the trademark's owner that results similar to that owner’sits trademark cannot be registered as a trademark. Likewise , literal g) of the same Article establishes that signs that are names of indigenous, Afro American or local communities cannot be registered as trademarks, as well as the characters, words or signs that are used by these communities to distinguish their products or services. The only exception that is made in order to permit the registration of those signs is if the application is submitted by the communities themselves or with their consent.
• The new Decision also establishes in Article 137 that when the competent authorities have evidence that the application offor a sign was submitted for the purpose of unfair competition, it is possible for the authority to reject the application.
• Pursuant to Article 146 frivoulous oOppositions to trademarks submitted frivolous can be punished, if the national rules of a Member Country so establishes.
• Article 146 of Decision 486 allows an additional, 30-day extension of the term for to submitting evidence in that can support of an opposition, for 30 more days. Likewise, this right is also given to the applicant that is responding to answering the observations (Article 148).
• According to Article 146, it is not possible to present submit oppositions against application of trademark applications that were submitted within the next six months following after the renewal grace period that is given once after the trademark term of the trademark is expired, providedwhen those oppositions are based on trademarks that coexisted in the market.
• Pursuant to Article 147 of Decision 486, any person whothat wants to submit an opposition for the registration of a trademark based on a prior right (prior application or trademark registration) in another Member Country, shallmust proveof a legitimate interest. In order to proveof this legitimate interest, an application for the trademark registration of a trademark must shall be submitted with the opposition.
• The last paragraph of Article 161 of Decision 486 establishes that the Trademark Office can refuse to register the assignment of a trademark assignment, if the transfer can cause confusion among the public. The new Decision also establishes that the License Agreement shall be registered with the Trademark Office in order to be valid before third parties. Now each of the Andean Countries will have to determine what ther implications are if an agreement is not duly registered.
• According to Article 165 of Decision 486, the cancellation of a trademark can be requested as a defense in an opposition procedure which is of opposition based on a trademark that is not being used neither by the owner or licensee. Likewise this same article establishes that it is possible to request the cancellation of a trademark just for some specific products or services, ordering a reduction or limitation of the products or services in the class.
• Pursuant to Article 185 of Decision 486, it is possible to register certification trademarks, which are signs that identifyies products or services and certify their quality and features.which the trademark's owner has made a statement of quality and features.
• According to Article 223 of Decision 486 the Trademark Office can order the cancellation of a domain name if a third party has registered the domain as a trademark, violating the legal rights over a notorious trademark.
• A new legal action has been enacted by Decision 486 for the enforcement of the Industrial Property Rights. According to Article 250 of the Decision, any trademark holder who has valid grounds for suspecting that the importation of counterfeit trademark goods may take place, can request the suspension by the customs authorities of the release into free circulation of such goods.

In conclusion, from the above, we can see that this new Decision is one of the most modern and revolutionaryup to date laws that has been enacted as an effort of the Andean Countries to comply with the requirements of ADPICTRIPS. (?) The Colombian government is preparing a regulation that will address the many issues that require a decision by each of the countries of the Andean Community.