In what amounts to a “seismic event” in the Latin American trademark world, Colombia acceded to the Madrid Protocol on May 29, 2012. This makes Colombia the second country in Latin America after Cuba (1995) to join the international registration system. The treaty will become effective with respect to Colombia three months after accession—August 29, 2012.
Why did it take so long for another Latin American country to join Madrid? Quite simply, it was the need to convince the government, trademark owners and trademark practitioners about the tremendous benefits that they would reap by making it easier for brand owners both inside and outside Colombia to obtain trademark protection. Over the past several years, dedicated INTA volunteers and government relations staff, in particular Dee Ann Weldon-Wilson (ExxonMobil), Richard Heath (formerly with Unilever), Gerhard Bauer (Daimler), Olof Fickert (Guerrero Associados) and INTA External Relations Manager for Latin America Laura Cruz, in partnerships with various governments, WIPO and other trademark associations, helped Colombia to take various steps along this long, arduous road.
A key factor was the inclusion of a commitment by Colombia in its negotiated free trade agreement (FTA) with the United States to join and implement the Madrid Protocol as well as the Trademark Law Treaty (TLT). For years INTA has pushed for such a provision, which is included in the Association’s Model Free Trade Agreement.
While approval of the U.S.–Colombia FTA remained pending in the U.S. Congress, the Colombian government, seeing the advantages of the Madrid Protocol, pressed ahead in getting both the necessary legislation approved by the Colombian Congress in 2011 and the implementing rules drafted by Colombia’s Superintendence of Industry and Commerce. INTA supported this effort through seminars for political leaders, letters of support during the legislative process and advice on developing the regulations and procedures. When the U.S. Congress finally decided to take up the FTA with Colombia, INTA sent letters in support. The entire effort came together in 2012 with Colombia joining both the TLT and the Madrid Protocol.
When Colombia becomes part of the Madrid System in August, both local trademark owners seeking international protection and foreign trademark owners seeking to protect their brands in the Colombian market will be able to take advantage of reductions in time, administrative costs and paperwork.
A number of key practice changes have been adopted by the Colombian Trademark Office since April of this year, including:
- Notarization and/or legalization of documents is no longer a requirement. The exceptions are for dismissals or waiver of rights which need to be legalized/notarized.
- Notarization is required for withdrawals or a waiver to a registration.
- Common translations are required for documents in languages other than Spanish.
- A multiclass system was adopted for trademarks and slogans, which will coexist with the current single class system.
- Fees for the first class are the same as the single class system, fees for additional classes are discounted.
- Official fees for changes of names, address, domicile were reduced by 50 percent.
- Dividing applications and registrations, for an additional fee, is allowed even for goods or services in the same class.
- Recordals are required for any change that may arise due to transfers, change of name or address, etc.
- One application will suffice to record changes of name or address for different registrations owned by the same owner, but official fees are due for each of the trademarks recorded.
- One application will suffice to assign different trademarks from the same owner to another, but official fees are due for each fo the trademarks (per class assigned)
- Governmental fees are reduced.
The effect these changes in Colombia trademark practice will have on other countries in the region remains to be seen. Will Colombia’s trading partners and competitors join Madrid so that they may also enjoy the competitive advantage of facilitating trademark protection through international registration? So far Mexico has moved aggressively to put legislation in place in order to join the treaty. All that remains is for Mexico to deposit its accession documents with WIPO.
INTA will continue to provide assistance not only to governments, but also to the Latin American trademark community as it seeks to adapt to advances in global trademark practice under the Madrid Protocol.
Learn more about INTA’s involvement with the Madrid Protocol
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association