Introduction
The principle of territoriality in trademark law establishes that the protection of a trademark is limited to the specific territory in which it has been registered. For this reason, many companies have had to adapt or change their distinctive signs when entering new markets, in order to avoid conflicts with previously registered trademarks.
Classic examples of this include:
CORONA beer, which for years operated under the name CORONITA in Spain due to a prior trademark registration for “CORONA” held by another business owner.
BURGER KING, which had to enter the Australian market under the brand HUNGRY JACK’S because “BURGER KING” had already been registered in good faith by a third party.
Limits to the Principle of Territoriality
Although this principle is generally applied, it is not absolute. Trademark law provides mechanisms that allow owners of foreign trademarks to secure and defend their rights in other jurisdictions when faced with bad-faith applications.
In the Andean Community (Colombia, Peru, and Ecuador), Article 137 of Decision 486 of 2000 allows for opposition to trademark applications when there is evidence that the applicant intends to perpetrate, facilitate, or legitimize acts of unfair competition.
The WooMooN Case: Opposition Before the SIC in Colombia
A recent example is the trademark WOOMOON, which identifies a well-known conceptual party organized by NOMAD SUNTRIBE S.L., primarily held in Ibiza, Spain, and expanded to other countries.
On August 8, 2023, a third party named Álvaro Verdiguiel applied to register the WOOMOON trademark in Class 41 (entertainment services) in Colombia, without the authorization of the legitimate owner.
Opposition Strategy
Given the absence of prior registrations in Colombia and the inapplicability of international treaties such as the 1929 Washington Convention, the legal strategy—led by Wolf Méndez Abogados Asociados in collaboration with the Spanish firm Baylos—was based on opposition grounded in indications of unfair competition.
Evidence was submitted demonstrating:
The international recognition of WOOMOON events in Spain and other jurisdictions.
The distinctive nature of the term WOOMOON, a coined expression with no known meaning, making it unlikely that the application was coincidental.
That the applicant resided in Mexico, where NOMAD SUNTRIBE was already organizing WOOMOON events, indicating prior knowledge.
That the applicant had previously attempted to register another trademark owned by NOMAD SUNTRIBE S.L. in Colombia, further undermining the presumption of good faith.
Decision by the Superintendence
Through Resolution 27124 of 2025, the Distinctive Signs Office upheld the opposition filed by NOMAD SUNTRIBE S.L. and denied the trademark registration requested by Álvaro Verdiguiel.
The Office concluded that:
“(…) there are reasonable grounds to infer that the applicant may have been aware of the existence and prior use of the WOOMOON sign in commerce, and proceeded to apply for its registration to the detriment of the legitimate commercial interests of a third party. The coincidence of applying for the registration of an identical fantasy mark for the same services in the same market sector cannot be considered accidental. These indications lead to the conclusion that the application may aim to perpetrate, facilitate, or consolidate an act of unfair competition capable of causing significant harm to an already established competitor in the market.”
Relevance of the Case
The WooMooN case is significant because:
Decisions in favor of oppositions based on signs of unfair competition are not common, especially when the mark has not yet been used in the country.
It reaffirms that, even without prior registrations in a given country, there are legal tools available to protect the trademark rights of foreign holders.
It highlights that unfair competition as a ground for trademark refusal is not contemplated in all legal systems, making its inclusion in Andean legislation a key asset in brand protection.
Conclusions
The WooMooN case confirms that bad-faith trademark applications can—and must—be challenged using the proper legal mechanisms. Decision 486 of the Andean Community provides an effective legal framework for the preventive defense of foreign trademarks against unfair competition in our region.
Salvatore Marcenaro
Director de Marcas Internacionales
