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Invalidity actions in industrial property matters in Colombia: Great news

Since January 2022, in accordance with the provisions of Law 2080 of 2021, which amended Article 152 of the Administrative Procedure and Administrative Litigation Code (‘CPACA’), the Administrative Tribunal of Cundinamarca has assumed jurisdiction in relation to invalidity actions in industrial property matters. 

This change was made with the goal of reducing the length of the invalidity proceedings, which could take up to 10 years in the C.S (in fact, there are still several cases from years ago being processed in that court). It was estimated that, given the Tribunal’s larger number of judges and fewer cases under its responsibility, and considering that the request for a preliminary ruling before the Andean Tribunal of Justice would no longer be mandatory (as it is optional in a double-instance procedure), the processing and decision-making in these matters would be expedited.

Well, the Tribunal has already started deciding the first cases in this matter. In In this regard, we refer to an invalidity action under file number 25000-23-41-000-2022-00355-00, in which the Tribunal issued a judgment on July 27, 2023, only 15 months after the action was filed (in May 2023).

The case, which involved the trademarks ‘EL REY’ of FABRICA DE ESPECIAS Y PRODUCTOS EL REY S.A. against the «KING BOX» trademark in Class 35, applied for and registered by NUVA COLOMBIA S.A.S., raises various formal and substantive issues worth analyzing:

  • Firstly, the Tribunal did not require the claimant to seek conciliation with the Office of the Attorney General as a procedural requirement to file the action. This is reasonable since it is prohibited for a public authority (in this case, the Colombian Trademark Office) to settle on the legality of its decisions and also because the claims lacked economic content. This position aligns with the Council of State’s repeated jurisprudence and is supported by the Conciliation Statute (Law 2220 of 2022). However, conflicting positions among different judges within the Tribunal on this matter have been observed, with some still demanding conciliation as a prerequisite for filing this kind of actions. In this sense, it is urgent for the Tribunal to adopt a unified position on the matter, preferably dispensing with this requirement, in line with this decision and the Council of State’s repeated jurisprudence.
  • The decision of the Tribunal to dispense with the initial hearing and, through a single Order, to grant the requested evidence, set the dispute, and call the parties to submit their closing arguments is also appreciated. This is fully supported by Article 182A of the CPACA (amended by Article 42 of Law 2080 of 2021), concerning the expedited judgment procedure, and represents a novel approach to the matter for the following reasons:

i) Dispensing with the initial hearing, according to the amendment introduced by Law 2080 of 2021, is optional for the judge. In practice, it has been observed that some judges of the Council of State in invalidity proceedings still pending before that court have opted to conduct the initial hearing, even when the requirements for expedited judgment are met. In most of these cases, especially those involving distinctive character discussions or the mere comparison of two signs, the initial hearing has proven to be just formality without impact on the process. In this sense, it is commendable that the Tribunal has decided to dispense with this stage for the sake of procedural economy.

ii) In cases where the Council of State has chosen to dispense with the initial hearing, it has refrained from calling the parties to submit their closing arguments in the same Order in which accepts evidence and set the dispute. This is because the C.S considers that before calling the parties to submit the closing arguments, the Order related to the evidence and the setting of the dispute has to become final, in accordance with its interpretation of Articles 181 and 183A of the CPACA. The Tribunal’s more liberal interpretation allows for the immediate call to the parties to submit their closing arguments in the same Order, in line with Article 181 of the CPACA, which specifically allows this during the evidence hearing (when applicable). This position clearly supports the administrative principles of procedural economy and expeditiousness and undoubtedly played a significant role in the swift resolution of the case under study.

  • It is also noteworthy that, since it is not mandatory, the Tribunal decided to dispense with the request for a preliminary ruling before the Andean Community Court and, rightly so, applied the ‘Acte Clair’ doctrine, finding several interpretations already issued and applicable to the specific case. This aligns with the intentions of both the National and Andean legislators in, respectively, modifying jurisdiction regarding invalidity proceedings and implementing the ‘Acte Clair’ doctrine.
  • Last but not least, the Tribunal based a significant part of its substantive decision on the Council of State’s jurisprudence regarding similar cases, concerning criteria for comparing trademarks and the applicability of the absolute ground for refusal related to the similarity of a sign to a well-known trademark. This is not insignificant, as even seemingly straightforward cases involving mere trademark comparison had seen contradictory decisions that took as much time as or more time than a case that, on paper, was much more complex and had much more evidence in the record.

Although it is too early to draw conclusions, it is evident that this decision constitutes great news for all of us, working in the field. It remains to be seen what will happen when the Tribunal starts receiving more and more cases, each with its own peculiarities and complexities, both in form and substance. Likewise, it remains to be seen how often the parties will appeal the Tribunal’s decisions before the Council of State and how quickly this will be processed and decided by the high court. In any case, we are undoubtedly facing a new, fresh, and necessary scenario regarding the handling of invalidity actions in industrial property matters in Colombia.

You can access the full text of the judgment through the following link: Link to the judgment

Salvatore Marcenaro

Trademarks Director

Foto del abogado Salvatore Marcenaro

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