This page is for trademark owners in Peru, Ecuador and Bolivia who see a conflicting application published in Colombia, for Colombian owners who see a conflicting application in one of those countries, and for foreign IP firms and brand owners in Europe, North America and Asia with Andean portfolios. It explains the Andean opposition under Article 147 of Decision 486 of the Andean Community: who may oppose across borders, what the opponent must do to prove a real interest, what the opposition can achieve and how it runs in Colombia.
According to its official website, the Andean Community is made up of Bolivia, Colombia, Ecuador and Peru. Decision 486 is its common industrial property regime and has no official English version. Quotations on this page are reproduced in Spanish from the official text, followed in brackets by an unofficial English translation.
Who may oppose in Colombia on the basis of an Andean mark
The ordinary rule is Article 146: within the term after publication, «quien tenga legítimo interés, podrá presentar, por una sola vez, oposición fundamentada que pueda desvirtuar el registro de la marca» [whoever has a legitimate interest may file, only once, a reasoned opposition capable of defeating the registration of the mark]. Article 147 then extends who counts as having that interest across the Member Countries.
Its first sentence reads: «A efectos de lo previsto en el artículo anterior, se entenderá que también tienen legítimo interés para presentar oposiciones en los demás Países Miembros, tanto el titular de una marca idéntica o similar para productos o servicios, respecto de los cuales el uso de la marca pueda inducir al público a error, como quien primero solicitó el registro de esa marca en cualquiera de los Países Miembros.» [For the purposes of the preceding article, the following shall also be deemed to have a legitimate interest to file oppositions in the other Member Countries: both the owner of an identical or similar mark for goods or services in respect of which use of the mark may mislead the public, and whoever first applied for registration of that mark in any of the Member Countries.]
Two groups are covered: the owner of an identical or similar mark for goods or services where use of the mark may mislead the public, and whoever first applied for registration of that mark in any Member Country. The rule works in every direction: an owner in Peru, Ecuador or Bolivia may oppose in Colombia, and a Colombian owner may oppose in any of those three countries. The article sets no nationality requirement; on its wording, what matters is the mark or first application in a Member Country, not where its owner is based.
The real-interest requirement: applying in Colombia when you oppose
Article 147 attaches a condition to both groups: «En ambos casos, el opositor deberá acreditar su interés real en el mercado» [In both cases, the opponent must prove its real interest in the market] of the Member Country «donde interponga la oposición, debiendo a tal efecto solicitar el registro de la marca al momento de interponerla» [where it files the opposition, and to that end must apply for registration of the mark at the time of filing it].
For an owner in Peru, Ecuador or Bolivia opposing in Colombia, this means two filings at once: the opposition and a Colombian application. That application is an ordinary one under Articles 138 and 139, and under Article 144 the office examines «si las mismas cumplen con los requisitos de forma» [whether they meet the formal requirements]; if requirements are missing, the applicant has sixty days from notification to complete them, failing which the application «se considerará abandonada y perderá su prelación» [shall be deemed abandoned and shall lose its precedence].
Under Article 7 the request must be filed «en idioma castellano» [in the Spanish language], and Article 8 requires documents in another language to be accompanied by «una traducción simple» [a simple translation], although the office may waive translations when it considers it appropriate.
What an Andean opposition can achieve: refusal or suspension
Where the opposition rests on a registered mark: «La interposición de una oposición con base en una marca previamente registrada en cualquiera de los Países Miembros de conformidad con lo dispuesto en este artículo, facultará a la oficina nacional competente a denegar el registro de la segunda marca.» [Filing an opposition based on a mark previously registered in any of the Member Countries in accordance with this article shall empower the competent national office to refuse registration of the second mark.] The verb is «facultará» [shall empower]: the article gives the office the power to refuse and does not say that refusal follows automatically.
Where the opposition rests on an earlier application: «La interposición de una oposición con base en una solicitud de registro de marca previamente presentada en cualquiera de los Países Miembros de conformidad con lo dispuesto en este artículo, acarreará la suspensión del registro de la segunda marca, hasta tanto el registro de la primera sea conferido.» [Filing an opposition based on a trademark application previously filed in any of the Member Countries in accordance with this article shall entail suspension of the registration of the second mark until registration of the first is granted.] The article adds: «En tal evento será de aplicación lo dispuesto en el párrafo precedente.» [In that event, the provisions of the preceding paragraph shall apply.]
Both effects require an opposition filed «de conformidad con lo dispuesto en este artículo» [in accordance with this article], which includes the real-interest application in the country where the opposition is filed. The decision itself comes under Article 150: where oppositions were filed, the office rules on them and on the grant or refusal of the registration «mediante resolución» [by resolution].
Deadlines and procedure of the opposition in Colombia
Under Article 145, once an application meets the formal requirements, the office orders its publication. The opposition must be filed «Dentro del plazo de treinta días siguientes a la fecha de la publicación» [within thirty days following the date of publication] and, on request, the office grants once an additional thirty days to submit the evidence supporting it (Article 146). Under Article 4, terms subject to notification or publication run «a partir del día siguiente» [from the following day], and under Article 5, unless the Decision provides otherwise, terms set in days are business days.
Article 149 lists the cases in which an opposition is not admitted: when it is filed without the essential data on the opponent and on the opposed application, when it is filed late, and when the corresponding fees have not been paid.
Once the applicant is notified of the opposition, Article 148 gives it thirty days to put forward arguments and evidence, with a single additional thirty days for evidence on request. When that term has expired, Article 150 provides that the office carries out the registrability examination and decides.
Opposing in Colombia from Peru, Ecuador or Bolivia, and the reverse
In practice, within the thirty days of Article 146 we need: the publication details of the opposed application; the registration or first-application details of the opponent’s mark in its Member Country; the goods or services on both sides; the details for the Colombian application, filed with the opposition; and the fees, since an unpaid opposition is not admitted under Article 149. Documents not in Spanish need a simple translation under Article 8.
A Colombian owner facing a conflicting application in Peru, Ecuador or Bolivia relies on the same Article 147: its Colombian registration or first application gives it standing if the article’s conditions are met, and it must apply for the mark in the country where it opposes at the time of filing the opposition. That opposition is filed before the national office of that country, and under Article 276 matters not covered by Decision 486 are governed by the domestic rules of each Member Country, so the local representative there must confirm the national formalities.
How we handle Andean oppositions
For owners in Peru, Ecuador or Bolivia and their foreign counsel, we review the publication, confirm the opposition term from the publication date, compare the marks and the goods or services, and prepare and file in Spanish both the opposition and the Colombian application that Article 147 requires. Foreign IP firms can see how we act as their trademark agent in Colombia.
For Colombian owners who want to oppose in another Member Country, we review the Colombian registration or application, its dates and its scope, and prepare the information the representative in that country will need to show standing under Article 147.
We act before the Superintendence of Industry and Commerce (SIC) and report in English or Spanish. The decision belongs to the office. In intellectual property matters we work with fixed fees: we quote in writing the same day, and fees are agreed in writing before any work begins.
Frequently asked questions
Can a Peruvian trademark owner oppose a trademark application in Colombia?
Yes. Under Article 147 of Decision 486, the owner of an identical or similar mark, or its first applicant in any Member Country, may oppose in the other Member Countries for goods or services where use of the mark may mislead the public, provided it proves its real interest in the Colombian market and, to that end, applies for registration of the mark in Colombia when filing the opposition. The same applies to owners in Ecuador and Bolivia.
Do I need to file a trademark application in Colombia to oppose with my Andean mark?
Yes. Article 147 requires the opponent to prove its real interest in the market of the Member Country where it opposes, and to that end to apply for registration of the mark at the time of filing the opposition.
What happens if an Andean opposition is based on an application, not a registration?
Under Article 147, an opposition based on an application previously filed in any Member Country entails suspension of the registration of the second mark until registration of the first is granted; then the rule for registered marks applies, which empowers the office to refuse the second mark.
How long do I have to file a trademark opposition in Colombia?
Thirty days following the date of publication, under Article 146 of Decision 486, with a single additional thirty days to submit evidence if requested. Under Articles 4 and 5, days are business days counted from the day after publication.
Can a Colombian trademark owner oppose in Peru, Ecuador or Bolivia?
Yes, if the conditions of Article 147 are met; it applies in all Member Countries. The Colombian owner must apply for the mark in the country where it files the opposition, at the time of filing, and the national formalities of that country apply to matters Decision 486 does not cover (Article 276).
Contact us
If a conflicting application has been published in Colombia, or you need to oppose from Colombia in another Andean country, send us the publication and your own registration or application details on WhatsApp.
Related pages
Trademark oppositions and appeals in Colombia · Provisional refusal under the Madrid Protocol in Colombia · Trademark registration in Colombia · Colombia trademark search · Trademark non-use cancellation in Colombia · Colombian lawyer for clients abroad · Oposición y apelación de marcas ante la SIC (Spanish) · Registrar en Colombia una marca de Perú, Ecuador o Bolivia (Spanish)