Colombia Update: What’s New in Trademark Registration of Business Groups

On August 5, 2022, the Superintendence of Industry and Commerce, issued Resolution 51804, by means of which it added a numeral to Chapter One, of Title X, of the Single Circular of said entity, which allows the coexistence of similar trademarks, in the name of different owners, if said owners belong to the same business group. This new regulation came into force from the first of September 2022.

Decision 486 of 2000 of the Commission of the Andean Community does not include any provision that allows establishing the guidelines applicable to the ownership of trademarks belonging to the same business group. Therefore, before the issuance of this resolution, the Superintendence of Industry and Commerce did not allow the coexistence of similar brands, in the name of different companies, regardless of whether they belonged to the same business group.

This meant that, at the time of conducting the registrability examination or the examination of an application for the transfer of marks, the existence of similar registrations, in the name of third companies, was considered an obstacle to registration or transfer, regardless of whether there was a business group situation among them.

This certainly represented a difficulty, since the decision of ownership of registrations depends on different factors, which means that it is not always convenient for the same company to hold ownership of all the trademarks of the business group.

According to the new regulations, in the case of national companies, those interested in demonstrating the status of a business group, within a registration or transfer procedure, must inform the Delegation at the time of submitting their application. This circumstance will be corroborated with the information on the situation of the business group rests in the Single Business Registry-RUES.

In the case of foreign companies, in addition to informing the Delegation, you must also provide a statement by the person authorized by the interested company, in which the unity of purpose and direction between the companies that are part of the business group, and that are involved in the process, is exposed. Additionally, the Resolution establishes that, when appropriate, a document issued by the competent authority of the jurisdiction to which the applicant company belongs must be provided, stating the unity of purpose and direction of the companies in question.

With the issuance of this Resolution, the Superintendence of Industry and Commerce recognizes, in a correct way, a factual situation that was occurring for some time in the registration scenario, facilitating the procedures and allowing business groups to manage their brands with greater freedom.

This will undoubtedly translate into an incentive for the registration of trademarks by business groups that, in the past, found a barrier that today seems to be overcome.

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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