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How to File a Trademark in Colombia with the Superintendence of Industry and Commerce (SIC)


Table of Content

Introduction
Trademark Registration in Colombia: An Overview
What are the Benefits of Trademark Registration in Colombia?
What is the Andean Community and What Protection Does it Offer?
Prior Registrations and the Madrid Protocol

Requirements
What Can I Register?
What Can't I Register?
Understanding the Nice Classification System
Breakdown of the Application Process
The Benefits of Hiring a Local Attorney
The Trademark Application process: Our 6-Step Guide

Conclusion


Introduction

Registering a trademark in Colombia is a strategic move for any business looking to establish a solid foundation for its brand identity and protect its intellectual property rights in the country. This process involves submitting an application to the Colombian Superintendence of Industry and Commerce (SIC), which oversees trademark registrations in the country.

However, navigating the trademark registration process in Colombia requires a thorough understanding of local regulations and procedures, especially regarding the first-to-file system. In this system, the date of application takes precedence over actual commercial use, emphasizing the importance of promptly securing trademark applications to prevent potential conflicts and costly disputes down the line.

In this guide, we'll explore the key steps involved in trademark registration in Colombia, including conducting preliminary searches, understanding registration requirements, and navigating the application process. By following these steps diligently, businesses can safeguard their brands and lay a strong foundation for growth in the Colombian market and beyond.


Trademark Registration in Colombia: An Overview

To register a trademark in Colombia, you need to submit the application to the Colombian Superintendence of Industry and Commerce (SIC), which falls under the Ministry of Industry, Commerce, and Tourism. It's worth noting that Colombia is a member of the Paris Convention reflecting its commitment to upholding global standards and collaborating with other nations in matters of intellectual property rights. This commitment ensures that trademark holders in Colombia enjoy a framework aligned with international practices, promoting fairness, innovation, and legal consistency in trademark protection and enforcement.

Nevertheless, applicants should still be mindful of the local registration rules. In Colombia, trademark registration operates under a first-to-file system, prioritizing the date of application over the actual commercial use of the mark. This means that an entity that manages to file an application first is likely to gain legal rights to the trademark, even if another business has been using it for a longer duration.

In fact, a common error for brands operating in Colombia is assuming a first-to-use trademark system and launching operations without first securing their trademark application. This oversight can lead to a nightmare and very costly scenario where brands invest substantial resources in expanding their presence, establishing stores, and launching extensive marketing campaigns, only to have someone else register their intellectual property (IP) first.

To avoid such pitfalls, it's crucial to:

  1. Conduct a meticulous preliminary search.

  2. Acquire a solid grasp of the trademark registration process managed by the Superintendence of Industry and Commerce (SIC), as well as the financial implications and timeframes involved.

  3. Complete the first-to-file application to Register your trademark before commencing operations.

  4. Vigilantly monitor IP registrations to detect potential conflicts.

By staying informed and adhering to legal requirements in these essential jurisdictions, brands can steer clear of future IP infringements and lay a solid foundation for international business growth.


What are the Benefits of Trademark Registration in Colombia?

  • Exclusive Rights: Obtaining an IP right over the trademark grants the exclusive right to use the mark in the country.

  • Prevention of Infringement: Ability to prevent third parties from using confusingly similar or identical signs.

  • Trademark as Asset: The trademark can be used as an intangible asset, enhancing brand value and business opportunities.

  • Assign and License: Owners can assign or license the trademark to others, generating revenue and expanding market reach.

  • Opposition Rights: Ability to file an opposition based on likelihood of confusion, protecting the trademark's distinctiveness.

  • Border and Customs Protection: Access to border and customs protection for the trademark, helping prevent unauthorized use and counterfeit goods.


What is the Andean Community and What Protection Does it Offer?

The Andean Community, which includes Colombia, Peru, Ecuador, and Bolivia, has rules for protecting trademarks, but each country follows these rules on its own. This means if you want trademark protection, you need to register your trademark in each country separately, and the registrations are not linked. However, having a trademark in any of these countries has its perks: you can object to similar trademarks in other member countries, defend your trademark against cancellation for non-use by showing it's used somewhere in the community, and use its recognition in any country as evidence in legal actions for well-known trademarks.


Prior Registrations and the Madrid Protocol

Applicants from Paris Convention member countries can prioritize trademark registration in Colombia if they apply within six months of their initial application and submit a certified copy within nine months afterward. This grants the same filing date as the initial application.
 
For applicants using the Madrid System, they can seek international registration with WIPO under the Madrid Protocol and extend protection to Colombia. WIPO then submits the request to Colombia, with the filing date matching the base application.

All other applicants must follow the standard trademark registration process in Colombia.


Requirements

Filing a trademark application in Colombia can be done online, by post, or in person. The application form must include the following details:

  • Full name(s), address(es) and nationality of the applicant(s).

  • Trademark information, including a description of the mark, digital image (if applicable), and color description.

  • description of the goods or services and the Nice classification (see the Nice classification section below) class(es) for the goods/services to be covered.

The following documents are also required:

  • Power of Attorney: Signed by the applicant or an authorized officer, notarized by a Notary Public, and legalized by consular legalization or with an "Apostille."

  • Certified copy of the Priority Document: If claiming priority, provide a notarized copy of the first filed foreign application.

  • Translation of documents into Spanish if they are in another language; assistance can be provided by in-house translators.


Requirements for Locals:

For locals registering a trademark in Colombia, the process involves providing personal information such as full name, address, and nationality. Additionally, applicants must describe the trademark, including a digital image if applicable, and specify the goods or services covered by the trademark. A Power of Attorney, notarized by a Notary Public and legalized by consular legalization or with an "Apostille," is also required. If claiming priority, a certified copy of the Priority Document must be provided. All documents not in Spanish need to be translated, and assistance can be provided by in-house translators.


Requirements for Foreigners:

Foreigners seeking to register a trademark in Colombia follow similar requirements but must provide their company's Tax Identification Number (NIT) instead of a personal ID. A Power of Attorney, notarized and legalized as mentioned earlier, is necessary, along with a certified copy of the Priority Document if claiming priority. All documents not in Spanish must be translated, and guidance can be provided by in-house translators to ensure compliance with local regulations.


What Can I Register?

The crucial point is that trademarks must be distinctive and distinguishable from existing trademarks. The following types of signs are eligible for registration:

  • Words or combinations of words

  • Images, pictures, figures, symbols, graphic elements, logos, monograms, portraits, labels, and emblems

  • Letters and numbers

  • Sounds and smells

  • A single color or a combination of colors

  • The shape of a product, its packaging, or wrapping

  • Any combination of the signs or elements mentioned above


What Can't I Register?

  • Descriptive terms

  • Forms with functional advantages

  • Description of goods or services

  • Generic expressions

  • Commonly used expressions

  • Isolated colors

  • Misleading descriptions of origin or nature

  • Indication of origin

  • Confusion-causing indications of origin

  • Incorporation of national symbols

  • Imitation of technical standards

  • Inclusion of protected plant varieties

  • Signs Contrary to law, morality, public order, or good customs.


Understanding the Nice Classification System

In Colombia, registering a trademark involves classifying the goods or services associated with the mark according to the Nice Classification system. The Nice Classification is an international system used to categorize goods and services for the registration of trademarks. It helps ensure uniformity and clarity in trademark registration worldwide.

When filing a trademark application in Colombia, applicants must specify the class or classes from the Nice Classification that correspond to their goods or services. This classification is crucial as it determines the scope of protection for the trademark. It's essential to accurately identify the classes relevant to your products or services to avoid complications during the registration process.

If you're not sure of the classification for a specific good or service, you can use an online tool such as TM Class from EUIPO (European Union Intellectual Property Office), which provides an efficient platform for conducting your search. There is also an advanced option for more in-depth searches.


Figure 1. TM Class Nice Classification Search Tool.Source EUIPO.
 

Breakdown of the Application Process

The trademark examination process starts when an application is submitted to SIC. SIC then assigns an application number and filing date, initiating three phases of examination: 

  1. The application is reviewed and published in the Official Gazette for opposition purposes.

  2. A formal examination checks if the application meets basic requirements like applicant details and correct classification of goods/services. Most issues in this phase relate to classification.

  3. A substantive examination checks if the mark is already registered by someone else and complies with legal standards. Distinctiveness is assessed; marks lacking inherent distinctiveness can be registered if they have gained distinctiveness through use in Colombia, with the burden of proof on the applicant.

The formal and distinctiveness examinations usually take three to six months. Any objections raised during these phases prompt an office action, allowing two months for the applicant to respond. This period can be extended by an additional two months.
 
After examination, the trademark application is published in the “Gaceta de la Propiedad Industrial” for opposition. The opposition period lasts 30 working days from the publication date.


The Benefits of Hiring a Local Attorney

Hiring a local attorney or trademark professional offers significant advantages when applying for a trademark in Colombia. They can assist in accurately determining the suitable trademark classes according to the Nice Classification system, ensuring alignment with local regulations.

Engaging legal experts also streamlines the application process, reducing delays and ensuring a seamless experience. They conduct thorough trademark searches in Colombia, providing comprehensive insights and ensuring that your trademark application is well-informed and meticulously researched, instilling confidence throughout the process.
 

The Trademark Application Process: Our 6-Step Guide



STEP 1. Conduct a Preliminary Trademark Validity Search

Before proceeding with your trademark registration, it's crucial to conduct a preliminary search to ensure that your proposed trademark isn't already in use or too similar to an existing one. You can perform this search using the database provided by the Superintendence of Industry and Commerce (SIC) of Colombia.

1. Navigate to the SIPI platform and select "Signos Distintivos".



Figure 2. SIPI Trademark Search Tool. Source: SIPI.
 

2. If you are a non-Spanish speaker, you can select English as your preferred language.

Figure 3. Trademark Search Tool.  Source: SIPI.

3. Enter the exact brand name you wish to register in the search box. Click "Search" to see if there are identical brand names already registered. If there are no matches, try searching for similar-sounding variations.

4. You can select "Advanced Search" to conduct a more search using a greater range of criteria.

5. Try using wildcard search commands such as asterisks (*) or question marks (?) to find different spellings. Consider variations that could cause confusion with existing trademarks.

These steps will help you check if your brand name is unique and avoid potential conflicts before registering your trademark.

Nominus also provides an search engine where you can conduct a Trademark Search by exploring names (similarities and equivalents), classes, and status (active or non-active).



Figure 4. Nominus Trademark Search Tool. Source: Nominus.
 

STEP 2. Set up an Account

To do this, navigate to SIC's Industrial Property Platform (SIPI). Click on "Registrarse" if this is your first time using the platform.

Figure 5. Setting up an account: Register. Source: SIPI.
 

1. If you are a non-Spanish speaker, you can select English as your preferred language.

2. You will then be asked to create a profile by entering your username or email and adding a password. Make sure you save these login credentials as they are essential for future access.



Figure 6. Create Profile. Source: SIPI.

Click "Submit" at the bottom right of the page to proceed.

Before registering your trademark, you will need to fill out the applicant details. This can be either as a natural person or legal entity.

If it's your first time on the platform, select "Crear Persona" to create a profile. Make sure to provide accurate personal information such as identification type, number, names, contact details, and address.

Figure 7. Creating an Applicant or New Customer. Source: SIPI.


If representing a legal entity, follow similar steps, providing company information and legal representation details. Upload necessary documents such as identification and legal registration papers. such as a Power of Attorney.

Confirm the creation of your profile as a natural person or legal entity.


Step 3. Complete the Application Form

Once you have conducted a preliminary search and made sure there are no conflicting trademarks, you can move forward by submitting an application to the SIC. Your application should include a clear representation of the trademark and a list of the goods or services you intend to cover with the trademark.

To complete the trademark registration application in Colombia, follow these steps:

1. Go to your account page and select "Apply for a trademark" from the options on the left.



Figure 8. Account Page. Source: SIPI.
 

2. A window will appear offering you the option of a select the option of an accelerated examination. Select "No" if you are happy with the Standard route.

3. You will then see the application form. In the Reference section, add the name of your proposed Trademark or brand name. Then add the required information, the applicant's ID card or the company's Tax Identification Number (NIT).



Figure 9. Trademark Application Form. Source: SIPI.

4. Attach the necessary documents: scanned ID card of the applicant (for individuals), document of existence and legal representation (for legal entities), and the logo or label in JPG format, either in color or black and white.

5. If you are applying for discounts, upload supporting documents such as advisory certificates for SMEs or documents proving the quality of your company.

6. Select the classes according to the products or services of your brand using the Niza Classification. You can search for subcategories within each class at no additional cost.

7. Choose the type of distinctive sign you are registering: nominative (text only), figurative (image), or mixed (combination of text and image). Upload the corresponding file according to your choice.

8. Make the payment for the registration fee using the payment options available on the platform.

Once these steps are completed, you will have submitted the trademark registration application in Colombia.


Step 4. SIC Examination

Once the SIC has received your application, they will conduct an examination to ensure it meets the requirements outlined in the Trademark Law. This includes assessing if your trademark can be registered and if it infringes on any existing trademarks

Timeframe: three to six months.
 
If any objections are raised, the applicant has 2 months to respond.
 

Step 5. Publication in the Bulletin

If your application is approved by the SIC it will be published in the Official Bulletin. At this stage, third parties are offered a 30-day period to oppose the registration if they believe it infringes on their existing rights.
Timeframe: 30 days
 

Step 6. Trademark Registration

If there are no objections during the opposition period or if any opposition is resolved in your favor, the SIC will proceed with registering your trademark. Once registered, you'll receive a certificate of registration.
 

Timeline:

Assuming there are no objections or oppositions that prolong the process, the entire process from application to registration can take between 6 to 8 months.
 

Associated Costs:

Applicants are required to pay the official fee for filing a trademark application. There's an additional fee for issuing the registration certificate upon successful application. It's essential to verify the latest fees on the SIC website as they may change over time.


Monitoring the Application

Monitoring your application is a critical step in ensuring the successful registration of your trademark in Colombia. Here are key aspects to consider:

  1. Regular Updates: Stay informed about the progress of your application by regularly checking the status on the Superintendence of Industry and Commerce (SIC) platform. This helps you track any developments or requirements from the authorities.

  2. Respond to Office Actions: If the SIC raises any objections or requests additional information during the examination phase, promptly respond within the specified timeframe. Failure to do so can lead to delays or potential rejection of your application.

  3. Opposition Period: After your application is published in the Official Bulletin, monitor the 30-day opposition period. If no objections are raised or if any opposition is resolved in your favor, the registration process can proceed smoothly.

  4. Communicate with Your Attorney: Maintain open communication with your legal representative or trademark attorney throughout the monitoring phase. They can provide valuable guidance, address any concerns, and ensure all requirements are met for successful registration.

  5. Document Management: Keep all relevant documents related to your trademark application organized and easily accessible. This includes correspondence with authorities, responses to office actions, and any supporting documentation.

By actively monitoring the application process and taking necessary actions in a timely manner, you increase the chances of a successful outcome and the timely registration of your trademark in Colombia.

Conclusion

Trademark registration in Colombia offers businesses numerous benefits, including exclusive rights to use their marks, prevention of infringement by third parties, and opportunities to monetize their trademarks through licensing and assignment. Additionally, registered trademarks enjoy border and customs protection, helping combat unauthorized use and counterfeit goods.

Colombia's adherence to international agreements such as the Paris Convention and participation in the Madrid Protocol facilitates streamlined processes for applicants from member countries, allowing for priority claims and international registrations. Moreover, Colombia's membership in the Andean Community provides additional avenues for trademark protection and enforcement across member countries. While trademark registration processes may vary in each country, having a trademark registered in one member state can provide valuable advantages in defending and enforcing rights in others.

Overall, trademark registration in Colombia is a vital step for businesses seeking to establish and protect their brands in the dynamic Latin American market. By understanding the registration process, leveraging international agreements, and seeking professional guidance when needed, businesses can navigate the trademark landscape with confidence and secure their place in the marketplace.