Trademark piracy or usurpation

April 03, 2023

Trademark piracy or usurpation is configured when a person attempts or succeeds in registering another person's trademark as his or her own. In this case, the infringer seeks to resort before the competent authority in the trademark field to register the trademark and benefit from the legality and legal protection that this grants.

Those who act in this way are called "trademark trolls" and seek to profit by executing the registration of someone else's trademark. In this sense, "trademark trolls" search for trademarks already registered in other countries in order to proceed with the registration and thus impose the owner of such trademark a negotiation for the intellectual property title. This usually happens with trademarks that want to enter international markets and find that their trademark has already been registered by these people who seek to profit from these illegal maneuvers.

If you are in the process of registering your trademark, and you encounter these obstacles mentioned above, do not hesitate to contact our expert intellectual property attorneys. At AGT Attorneys, we offer legal advice in the whole process of trademark registration and in the planning of strategies to achieve the adequate legal protection for your trademark.

Trademark piracy in Colombia

The legal norm by which industrial property is regulated in Colombia is Decision 486 of 2000, which is a community legislation of the Andean Community of Nations or CAN, by its acronym in Spanish, of which the country is part. This decision stipulates that the registration of a trademark gives its owner the right to prohibit third parties from performing the following actions in reference to its trademark:

• Publicly using a sign identical or similar to a highly recognized trademark, and even for non-commercial cases, when this activity may cause a negative result in its commercial or advertising value and affect its distinctiveness in relation to other trademarks.
• Publicly using a sign identical or similar to a highly recognized trademark, when this activity, may cause a negative result in its commercial or advertising value and affect its distinctiveness in relation to other trademarks. Economic damages may also be generated when the prestige of the trademark is taken advantage of to diminish or affect it.
• The manufacture of materials such as labels and packaging that disclose the trademark, and therefore also the sale and marketing of them.
• Using in the market a sign equal or similar to the trademark with respect to products or services, with the purpose of generating confusion or detrimental association.

What to do against trademark piracy?

Within the Colombian legal system, there are several legal routes to protect your trademark and stop these detrimental actions that originate from the protection granted by its registration.

Thus, as established in Decision 486 of 2000, a person who is the owner of a registered trademark may prohibit the use of a distinctive sign equal or similar to his own, when it is used to differentiate products and services that are also equal or similar, as long as this activity causes confusion to the consumer and/or a wrong association.

Similarly, the Colombian Criminal Code (Law 599 of 2000) criminalizes conducts related to the fraudulent use of the trademark. In that sense, article 285 contemplates trademark misrepresentation as:

"Whoever falsifies a trademark, password, sign, signature, or rubric officially used to contrast, identify or certify weight, measure, quality, quantity, value or content, or applies them to an object other than that for which they were intended, shall incur a prison term of sixteen (16) to ninety (90) months and a fine of one point thirty-three (1.33) to thirty (30) legal monthly minimum wages in force".

Additionally, the Colombian criminal law also includes as a crime the usurpation of trademarks and patents in its article 306:

"Whoever, fraudulently, uses trade name, ensign, trademark, patent of invention, utility model, industrial design, or usurps plant variety breeder's rights, legally protected or similarly confusable with one legally protected, shall incur imprisonment of four (4) to eight (8) years and a fine of twenty-six point sixty-six (26.66) to one thousand five hundred (1,500) legal monthly minimum wages in force..."

Trademark Registration Lawyers in Colombia

For all the mentioned above, it is evident the importance of registering your trademark as soon as possible for the legality and legal protection that the registration offers to the owner. However, this registration is the first step for such protection, since legal actions must be taken in case "trademark trolls" or third parties carry out fraudulent strategies to take advantage of your trademark or discredit it.

At AGT Attorneys, we have expert lawyers in trademark registration that will provide you with the legal support you need when these circumstances arise and put your trademark at risk. When you have any problem with your trademark or want to register it, remember that you can count on AGT Attorneys to help you.

Write to us on our Contact Form, schedule your legal appointment with our lawyers through the following link or contact us at +57 310 5706331. We will be happy to assist you!

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