Big Brush Paints and Thinners Ltd., has not yet registered its trademark “Big Brush” before the Colombian Trademark Office (CTO). Recently, the General Manager of Big Brush Paints and Thinners Ltd. found out that another paint manufacturer, Best Color Paints, wants to sell a paint, which is designed especially for walls, and is going to be called “Thick Brush”. Big Brush Paints and Thinners Ltd. has used “Big Brush” in order to identify its products for more than fifteen (15) years. What can Big Brush Paints and Thinners Ltd. do in order to prevent Best Color Paints from using the words Thick Brush to identify its new paint?
Under Andean Decision 486 (IP law applicable in Colombia) the right over a trademark is only acquired through its registration before the CTO. The registration grants its titleholder useful and effective protection mechanisms, such as civil and/or criminal actions, against trademark infringement.
Accordingly, the hypothetical case mentioned above illustrates the importance of registering a trademark in Colombia, especially if it has been identifying a product for such a long time.
Fortunately, domestic Colombian legislation provides additional protection mechanisms in order to protect signs or identifiers that have not yet been registered, but have the characteristics of a trademark. One of these mechanisms is an Unfair Competition action, through which acts of imitation and unjust exploitation of another’s reputation may be declared as an unfair conduct. This means, that although an exclusive right over the trademark is not recognized, one can still obtain a remedy against the offending conduct.
However, these kinds of actions are more onerous for the plaintiff because the evidentiary burden is much greater. For example, throughout the judicial process, one has to fully prove that the unfair conduct has taken place.