Know the New Regulation About Non-Traditional Trademarks

Feb 25, 2016

A short time ago, we published an article in our blog about the new challenge companies have today to protect their non-traditional trademarks. (The link can be found here: New challenge companies how protect non-traditional trademarks)

In this article, we mentioned that the greatest challenge to gain protection was to comply with the ability to distinguish one from another. This requirement was mandated in Decision #486 of 2000 by the Comunidad Andina.

In that regard, the Superintendence of Commerce and Industry, in Resolution #3718 from February 2, 2016, established guidelines for applications to register non-traditional trademarks. This Resolution will help businessmen to better understand the requirements when they apply to register these trademarks.

What follows is a brief description and analysis about each of the non-traditional trademarks mentioned in the Resolution:

-Three-Dimensional Trademarks

In relation to this kind of trademark, the Superintendence of Commerce and Industry clarified that the graphic representation should have ample details, and they should be accompanied by a written description. 

In addition, the law authorizes that the aforementioned requirement could also be fulfilled by submitting the registration application with six different angles showing the trademark. If these approvals are not considered detailed enough, the Resolution adds the possibility that the reviewer can request a physical sample of the trademark.

As an example of a three-dimensional trademark without written elements, we can look at the example of the well-known Evian bottle. 

Evian bottle 

-Mixed Three-Dimensional Trademarks

There is also the possibility of showing these trademarks next to a word or group of words, which was not possible before. Look at the following examples:

 

mixed example  

 

 

-Sound Trademarks

The graphic representation (staffs, symbols, or other elements that allow them to be identified) and a digital version of the recording in MP3 format continue to be the necessary requirements for registering this kind of trademark.

-Color Trademarks

It is a formal requirement to present these types of trademarks with a precise and unambiguous graphic representation. The color must be demarcated by means of a pictorial representation, and it is left to the discretion of the applicant to identify the color with an internationally recognized code, for example PANTONE.

An example of this kind of trademark can be seen In the United States, by means of the manner in which the company Louboutin protects the color red on the soles of its high-heeled shoes. 

 Color trademarks

-Tactile or Textural Trademarks

The Resolution regulates tactile and textural trademarks that are on the rise in various industries in Colombia. The following are the legal requirements:

  • A clear, precise and concrete description of the texture that is trying to be protected
  • A three-dimensional illustration or photograph
  • A physical example of the texture

These new regulations shed light on the panorama of how non-traditional trademarks should be presented. The challenge of how to position these trademarks in the minds of the consumers is left in the hands of the entrepreneurs.

 

Contact: 

Tatiana Carrillo 

tcarrillo@lloredacamacho.com 

Cristina Velasco 

cvelasco@lloredacamacho.com