Webinars Mark Anniversary of Landmark Andean IP Law and Changes Ahead

Published: October 7, 2020

A historic university in Colombia is celebrating the 20th anniversary of the Andean Community Industrial Property Law (Decision 486 of 2000) with a series of webinars on aspects of the law and possible changes going forward. INTA joined several senior judges on a panel and spoke about invalidation proceedings and the importance of intellectual property (IP)-specialized courts.

Representing INTA, Jose L. Londoño, Chief Representative Officer, Latin America and the Caribbean, participated in a September 24 webinar, which focused on the experiences of the invalidation proceedings of each IP right regulated under Decision 486 and local law, but most importantly, on the status of the invalidation actions carried out before Colombia’s highest court, the Council of State.

The event also examined recent developments regarding the use of electronic means, the Mandatory Prejudicial Question (or preliminary ruling) carried out by the Andean Court, and the need for specialized IP judges.

Justice Luis Rafael Vergara Quintero, Colombian Magistrate of the Andean Court, shared the court’s proposals for modernization and creating legal circumstances where the Prejudicial Question may be waived in order to speed up concrete cases. These are mostly trademark related, such as relative or even absolute grounds for the rejection of trademark applications. There is no date for the new changes; they need to first be approved by the Andean Commission, consisting of countries’ trade or external relations ministers.

Providing the industry and IP practitioner perspective, Mr. Londoño and Juan Pablo Concha (Baker & Mackenzie, Colombia), commented on some of the features and pitfalls of the invalidation actions set forth in the Decision 486, and the benefits of having an IP-specialized judiciary. Both speakers acknowledged that Colombia has IP-specialized courts in effect, with the Council of State the first prominent and most traditional example, and the specialized Judicial Units created in 2012 for IP infringement actions placed at the Colombian Trademark and Patent Office, Colombian Copyright Office, and Colombian Plant Breeders Right Office.

Justice Hernando Sanchez, representing the Council of State, announced the upcoming merger of the Colombian IP Office electronic system with the Council of State. This means there will be one electronic file from the application to the final judicial decision about the validity of the right, although the latter takes place at the judicial branch. Up to now, filing an invalidation action against the final decision of the Trademark Office would require going to a court and filing the action in a different system.

Justice Sanchez also shared the proposed content in bill 2019/007, which aims to modify some provisions of the Administrative Jurisdictional Control Code, among them the creation of a new invalidation instance before a district court. If enacted, instead of one unique instance before the High Court, invalidation actions would have two instances, in addition to the previous review carried out by the IP Office.

Prompting the change is the excessive workload of the Council of State, although district courts are even more overwhelmed, based on the amount of cases they are handling. Currently, the Council of State takes an average of six years to decide an invalidation action, so the bill might not reduce the total time, but rather create two instances that take three years each.

Colegio Mayor de Nuestra Señora del Rosario University (Bogotá, Colombia) is hosting the webinars. More information is available here (in Spanish).

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2020 International Trademark Association