News

Madrid Agreement in Colombia. What is the current position?

As it is now well known, Law No. 1455 of 2011 enacted the Protocol Relating to the Madrid Agreement concerning the International Registration of Trademarks and its “Regulation”, which became law on 29 August 2012. Here is a summary of the current situation.

The Madrid Protocol is a system that offers a trademark owner the possibility to protect and manage the registered trademark in several countries using a centralised system. It enables the trademark owner to file one application directly with his own national or regional trademark office (the office of origin) in one language, avoiding translation costs.

This is then administered by the World Intellectual Property Organization (WIPO) through offices in various designated countries (designated contracting parties).

Fees are paid in one single currency, in a single procedural step, and there is no need to engage legal representatives in all the countries designated.

Each designated contracting party decides independently whether to refuse or to protect a trademark, after verifying whether its own national conditions are met.

However, in the event of local opposition, the trademark owner is responsible for acting in the designated country concerned, for which it will probably be necessary to engage the services of a local lawyer.

Until now, if a trademark owner wishes to protect its Colombian trademark abroad must pay fees in the local currency, engage a lawyer to file the application and, if required, supply translations.

In contrast, the Protocol allows trademark holders to use a worldwide one-stop-shop to process these applications.

To help to implement the Protocol, the Superintendency of Industry and Commerce (SIC) issued a series of provisions in September 2012 which have been applied in Colombia.

Being a party to the Madrid Protocol means numerous advantages for Colombians in general, as well as for producers and exporters:

Applicants avoid numerous high fees for protecting trademarks in several countries
There is no need to pay for translations because a single application can be made in Spanish
A single currency
In principle, there is no need to hire local agents in designated countries
It encourages exports by simplifying the process for protecting Colombian trademarks in other countries
It fosters foreign investment, because companies in other members of the Madrid Agreement can simply designate Colombia in their international applications
Increased income for Colombia, because it will receive a share of all the fees collected by the WIPO for each designation made in an application or international registration

Regarding current use of the Madrid Protocol in Colombia, no international registration applications had been yet filed with the Superintendency of Industry and Commerce (SIC) at December 2012.

In any event, at the end of 2012, approximately 140 territorial extensions (initial or subsequent designations) had been filed, primarily by European countries with some from Japan and Singapore, others from Australia and a smaller number from the United States.

In this regard, it is a breakthrough that Colombia is the first country in South America and second in Latin America to join the Madrid Agreement to facilitate international trademark registration, raising it to the level of industrialised countries and setting an example to other countries in the region.

Carmen Sánchez-Puelles