Application of the grounds for trademark unregistrability of article 137, Decision 486 of 2000 in Colombia: Lack of legal certainty ?

Abstract

This document will study how the grounds for trademark unregistrability of article 137, Decision 486, is being applied in Colombia over time. It is relevant to delve into the subject because the cited rule enables the national office to deny a trademark registration if it has prima facie evidence to infer that the application seeks to commit unfair competition acts.

Therefore, an extensive analysis of Article 137 under the developments made through prejudicial interpretations by the Court of Justice of the Andean Community is made, and a chronological investigation on the changes in the application of the rule since the issuance of the Sole Circular of the Superintendence of Industry and Commerce, the amendments that modify the scope on the application of this rule, and some pronouncements issued by the Colombian authority which demonstrate different ways of interpretation.

 Additionally, it is addressed the examiner's responsibility as regards the preventive nature of his registrability analysis. Finally, it is concluded that the examiner must conduct a broad study on the application for registration that goes beyond a simple study of unregistrability, analyzing other market elements of unfair competition. Otherwise, he would be omitting the scope of his functions and the correct application of the rule.