By Germán Marín and Rosa Margarita
Decision 486 of 2000
of the Commission of the Andean Community of Nations -norm that rules
trademarks in Colombia- in its Article 250 provides that "the owner of a
trademark who has valid grounds for suspecting that an operation of import or
export of products infringing that right will occur, may request the competent
national authority to suspend this customs operation. The conditions and
guarantees established in the internal rules of the Member Country are applicable
to this request and to the order issued by this authority".
Government, honoring its commitments through trade agreements and treaties,
issued Decree No. 4540 of 2006 that regulates border measures, being its scope,
in relation to trademarks, the one referring to the "import operations,
export or transit of merchandise of counterfeited trademarks".
The Decree defines
merchandise of counterfeit trademark as follows: "Any merchandise,
including packaging, bearing without authorization a trademark identical to the
trademark validly registered for such merchandise, or not be distinguished in
its essential aspects from that mark, or that is confusingly similar, and that
thereby infringes the rights of the holder of the trademark in question".
And given the
mentioned fact, it authorized the Colombian customs authorities the possibility
to temporarily suspend the importation, exportation or transit of merchandise
allegedly of false mark, while the competent authority decides on the existence
or not of such circumstances.
The procedure implies
that the trademark owner, who in this article is understood as the owner of a
trademark registration or, where appropriate, its successors, assignees and
exclusive licensees, may request the said suspension to the customs
administration, and in case that it is proven that the merchandise constitutes
counterfeit trademark, it shall not proceed the release, or approval of
shipment of the goods, or of customs transit, as appropriate.
The request to
suspend the customs operation must be made by the owner of the trademark right
directly or by his legal representative or attorney. The request should include
full identification of the holder of the mark or of the persons that are authorized
or licensed to operate the industrial property right, as well as the
identification of the trademark right with indication of the registration
number, and the identification of the facts constituting the violation of that
right. It must indicate the place where genuine merchandise is manufactured,
and the complete identification of the manufacturer, accompanied by a detailed
description of the genuine merchandise. Also, if possible, a description of the
allegedly counterfeit trademark merchandise subject of the request for
suspension of customs, and the indication of its location.
Obviously, with the
request all documents proving the veracity of the above requirements must be
provided, as established by the Decree.
Concerning the right
of inspection of the alleged infringing merchandise, the Decree provides two
mechanisms: One prior to the filing of the request for suspension of the
customs operation, for which a petition is sufficient in this regard along with
the documents evidencing the ownership of the trademark and the document
certifying the legal standing to raise the request. The second mechanism occurs
when the inspection petition is part of the request to suspend the customs
The filing of the
request for suspension of the customs operation has the following consequences:
1. The suspension of
the storage term and consequently of release, or approval of the shipment, or
transit operation, as appropriate.
2. The impossibility
of obtaining the direct delivery of the goods, an event in which it will be
ordered the transfer thereof to a storage facility. This same measure will be
adopted in respect of goods under transit.
administration must decide whether it supports or rejects the request to
suspend the customs operation within three (3) days following its submission.
If it accepts the request it shall order in the same decision i) the suspension
of the customs operation; ii) the provision of a guarantee equivalent to 20% of
FOB value of the goods to ensure the eventual damage that may be caused to the
importer or exporter, without prejudice to the responsibility of another order;
iii) the communication to the storage facility where goods are found about
the suspension of the customs operation; iv) the authorization to the
petitioner to examine the merchandise within five (5)days. This diligence will be served in the presence of the customs
authority and the costs shall be borne by the petitioner.
In the case of highly
perishable merchandise, and without prejudice of the plaint before the
competent authority, there will be no suspension of the customs operation if
the alleged infringer so requests and provides a bank or insurance company
guarantee, equivalent to one hundred percent (100%) of FOB value of the
merchandise, to ensure the damage that may arise from the alleged violation.
In the meantime, the
petitioner requesting the customs operation suspension should promote civil
claim or criminal complaint for trademark counterfeit before the appropriate judicial
authority, which in our case of Colombia is the civil judge of the circuit or
the criminal court judge. Indeed, within ten (10) days after notification
of the order admitting the request for the customs operation suspension, the
petitioner shall submit to the customs administration the proof to have
constituted the warranty and the copy of the claim or complaint with which he
initiated the process before the judicial authority.
Non-delivery of these
documents and within the term herein provided, shall be deemed as a withdrawal
of the request of suspension, in which case the customs operation will continue
When the decision of
the civil or of the criminal judge in the process initiated for the
purpose, declares the counterfeit of the trademark, the customs authority shall
refuse the release, the authorization of shipment or transit of
merchandise, which will be available to the competent authority for subsequent
When the judge
decides that there is no false trademark, the terms shall be reverted and the
customs operation will continue normally. In this case, customs shall
order to make effective the guarantee in favor of the affected, to whom the
original must be delivered, in the event that the judge would have not ordered
such delivery within the process.
While the competent
authority decides on the merits, the merchandise will remain trapped in the
storage facility or zone available to customs. The costs will be borne by the
Finally, the Decree,
with the aim of guaranteeing the rights of trademark owners and prevent entry
to the country of merchandise with counterfeit trademarks, regulates the so
called Trademark Owners Directory, which is a record by which the trademark
owners inform the customs authority the existence of their trademarks, the
product features, the persons that are entitled to commercialize them in the
country, as well as information about the lawyer or person to be contacted in those
events of possible infringements of trademark rights.
administration has wanted to participate actively against the importation,
exportation or transit of counterfeit trademark merchandise. In that sense it
has trained its staff in relation to trademark law, and punctually in the study
of false trademark recognition. However, in this sense, it has requested
cooperation from trademark owners in order to enroll themselves in the
Trademark Owners Directory of that entity and provide training to the customs
staff in order to facilitate their work of identifying merchandise bearing
No doubt a healthy trade
with authentic trademarks will grow the confidence of consumers, for whom
trademarks exist. National authorities are aware of this need, and in
pursuit of the market transparency it has regulated as indicated above the
Germán Marín, attorney from
Universidad Externado de Colombia, specialized in Law of Procedure (U.
Externado de Colombia), and with long experience in Industrial Property Law,
Commercial, Administrative and Civil and Commercial law, as well as in Arbitral
Procedures; professor of prestigious universities in Colombia in the areas of
Commercial Law, Industrial Property, and Arbitration, and who worked until this
year and for over twenty (20) years in the law firm Cavelier Abogados, of which
seventeen (17) he performed as a partner of the firm and as Head of the
Rosa Margarita Santacruz,
attorney from Universidad del Rosario, specialized in Financial Law (U. del
Rosario) and in Integration in the International System (U.
Javeriana), and with long experience in Industrial Property Law
especially in Trademarks as for her over fifteen (15) years working in
the law firm Cavelier Abogados, in which she performed during the last three
(3) years as Head of the Trademark Department.