Colombia Update: Challenges of Article 7 of the 1929 Pan-American Convention of Washington

According to Article 7 of the Inter-American General Convention on the Protection of Trademarks and Trademarks, also known as the 1929 Pan-American Convention of Washington, the owner of a protected trademark in one of the contracting states of the convention may oppose the registration of a trademark similarly confusing with his own, in the country where such registration is sought.

QUESTION 1: What are the requirements for applying the ground of non-registrability in Article 7?

There are 5 requirements that must be met in order to apply Article 7 and thus deny the registration of a trademark in a contracting country to the convention:

1. The opposition is filed by the owner of a trademark legally protected by one of the Contracting States;
2. That the opposition is filed within the legal term established for it;
3. It must be shown that the person using or seeking to register it had knowledge of the existence and use in any of the Contracting States of the mark on which the opposition is based;
4. It must be shown that the trademark on which the opposition is based is used to distinguish goods of the same class.
5. That the trademark against which the opposition is filed is substantially the same as yours or likely to cause confusion.

One of the challenges that arises when invoking Article 7 of the Convention as a basis for an opposition is to prove knowledge of the trademark registered in another country.

QUESTION 2: How do you prove that the person seeking to register a trademark in a contracting country had knowledge of the trademark as grounds for opposition?

Although there is no exhaustive list, some of the useful tests to comply with this requirement could consist of internet use tests such as the official website or profiles on social networks; certifications from the tax auditor demonstrating the income from sales and investments in advertising of the trademark that is the basis for opposition; copies of advertising of the trademark in the country where it is registered; Photographs of the way in which the trademark is used in the country where it is registered and in other countries, if applicable.

Notwithstanding the foregoing, although such evidence may be considered valid to prove the use of the trademark, it could be considered insufficient to prove the applicant’s knowledge of such use, so it is very important to choose the correct evidence for the type of product or service in question. At this point, it is important to highlight that, although the Council of State has accepted the importance of the impact of internet testing when it comes to proving awareness of a trademark in the context of the application of the article under analysis, in some cases this may not be sufficient, given the nature of the goods or services.

Indeed, although there is no unified position on the issue, in those cases where the registered trademark is of restricted use, for example, because it requires a subscription or affiliation by the consumer to be able to access the product or service, it could be concluded that, despite having some kind of presence on the Internet, The trademark is not available to anyone, and therefore affects the requirement of knowledge of the trademark on the part of the applicant.

Therefore, in each case, a conscientious choice must be made of the evidence provided in this type of case, taking into account the nature of the products and services and the extent of the impact of the dissemination on the internet that it has.

By LLOREDA CAMACHO & CO, Colombia, a Transatlantic Law International Affiliated Firm.  

For further information or for any assistance please contact colombia@transatlanticlaw.com 

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