• Practical Hints for Protecting Your Trademarks in the Andean Community
  • April 25, 2011 | Author: Natalia Tobón
  • Law Firm: Cavelier Abogados - Bogotá Office
  • You as entrepreneur, know the importance of the registration of a trademark in Colombia, and in general in the  Andean Community[1]. However, you do not know yet how to shield your company’s distinctive signs, for preventing your marks from being copied by the competition and or lastly for helping your lawyer to win the litigations for breaching your industrial property.


    Because of above, below please find our suggestions of several simple tools, whose implementation can generate important savings in time, money and “headaches”, in respect to trademark protection:


    1.       Do not permit the advertising agency or the marketing department to work alone. Integrate their work with the legal department. 

    2.       Demand the creation of the Brand Book, which is a document, containing the history of the mark: The Brand Book.

    3.       Optimize your registrations. As fashion designers nowadays say “less is more”.

    4.       Always defend your marks.


    1. Integrate your company’s lawyers and creators.


    The legal department should take part in all the marketing, advertising and merchandising projects of the company. Legal assistance from the beginning not only represents saving resources, but also will guarantee a safe and trustworthy launching of the products. You have probably seen or suffered how advertisers create costly campaigns which in the last minute cannot be implemented due to legal problems. (Namely, the trademark was already registered, there is comparative advertising, etc..) In this respect we recommend the following:


    a. Always demand that the legal management approve the projects as a requirement before launching. The purpose of this is to save time and money, because then only “bulletproof” projects are analyzed. Let me quote a boss I once had “Bring me solutions, not problems” 


    b. It is suggested to give internal lectures in the organization for increasing the knowledge about industrial property.




    2.Create your brand book (Brand Book)


    All trademarks should have a book, called brand book, created by marketing management or by the advertising agency in charge of your account. That book contains the history of the trademark from its inception and up to present. The book thoroughly describes the reason for being of the trademark, its own characteristics and the manner how marketing was implemented. It also contains what is called the “Look&feel” of the brand. 


    In this respect it is worth mentioning that certain aspects of said book should be protected as business secret, because much of the information contained in it can benefit a competitor, for example the studies between focus groups regarding the acceptance of a word or of a specific design.


    However, other aspects of the book publication, for example the graphical evolution of a trademark to adapt it to new values and times of the company, can constitute a valuable present for clients on special dates. 


    3. Less is more. Optimize your registrations.


    Do not be seduced by the temptation of registering everything. Measure the impact, the period of use, the importance and the strategic aspects of the distinctive signs that you wish to register. This is especially useful in the case of promotional commercial slogans, which are usually used for a specific period of time and then forgotten. We recommaend to have a small but well protected trademark portfolio instead of a big and vulnerable one.  


    Besides, remember that in most countries there is a procedure of trademark cancellation due to lack of use. 


    4. Defend your trademarks


    Prevent unauthorized third parties from using your distinctive signs or from counterfeiting your products. It is true that sometimes it costs more to defend a mark than what it is obtained from the sales of a product in certain market or country, but keep in mind that the unauthorized, reiterated and peaceful use of trademarks can weaken your position and generate losses of legal arguments when claiming your trademark rights. 

    [1]In Colombia and in general in the Andean Community, the registration of a trademark generates rights, that is, the rights on the trademark are only obtained through its registration. In the United States, however, it is the use that    confers rights on the trademark. .