Marin Santacruz & Asociados: Colombia Adopts "The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" By Law 1455 of June 29, 2011

Marin Santacruz & Asociados: Colombia Adopts "The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" By Law 1455 of June 29, 2011

By: Rosa Margarita Santacruz and Germán Marín

The Colombian government has approved the adhesion of Colombia to the mentioned Madrid Protocol, by means of law 1455 of June 29, 2011, which shall enter into force upon the exhaustion of constitutional control procedure that will make the Constitutional Court, and the deposit within WIPO. Indeed, three months after the deposit of the instrument, without prejudice to the additional time that the Administration determines for the implementation and local regulations for the same, the Protocol will be a reality in our country.

Adherence to the referred Protocol, as it is known,  does not replace the internal established law for trademarks in Colombia,  Decision 486 of the Andean Community of Nations. Likewise, the International Office does not replace the national trademark office. It simply presents to the owners of trademarks an additional option for international registration of marks that must be a cheaper and easier route, enabling them to increase their competitiveness.

Among other reasons for this approval the Government seeks to stimulate national industry, and especially small and medium enterprises that could hardly gain protection for their marks in multiple foreign countries due to the high costs involved: multiple rates, multiple representations in each country, multiple steps in different languages and the costs associated with them.  Also seen the positive experiences of other developing countries that have benefited from their accession to the Protocol and have expanded their exports of goods and services.

Accession to the Protocol is foreseen beneficial not only for national industries but also for the Colombian Administration since it expected a gradual  growth of trademark applications and in one side it will receive a share of the additional fees collected by WIPO, plus  the corresponding input each time it is designated in an international application, if it so regulates.

Additionally, no longer having charge of the review of formal requirements of the applications, it may be more efficient in other activities:  Prior to obtaining registration it may undertake its faculty to deny or grant registrations of international applications, and  the publication of the international registration to continue to ensure the defense of thirds  through the opposition.  After the grant of registration it is expected a large increase in work deciding legal remedies filed, since they are submitted only at the national office.

Perhaps one of the fears generated by the Protocol under consideration is to be dependent on the existence of the basic registration for a long period of five years. The fact that during the first 5 years from the date of the international registration  what happens to the registration or application in their country of origin also happens in all countries designated under the International Registration involves a disadvantage. If the basic application or registration is successfully attacked in an  opposition or cancellation procedure for instance,  which is what is known as "central attack", all rights in the designated countries will also fall, with the consequent economic losses and time for the owners.

On the side of the Colombian Administration it is likely that the development and implementation of the Protocol takes a while, although the Administration has been preparing itself to face the changes involved by Colombia's accession to the Protocol in question.  But on the side of the Colombian owners of trademarks it is expected that they  heavily seek access to  protect their trademarks abroad with the new option for international registration.

....

Lexis.com subscribers can explore/search Trademark Law resources on Lexis.com or access any of these Mathew Bender Trademark Law publications:

Non-subscribers can purchase Trademark Law treatises/resources and Mathew Bender publications from the LexisNexis Bookstore

For more information about LexisNexis products and solutions connect with us through our corporate site.