You want your trademark protected in Colombia and you have two routes: designate Colombia through the Madrid Protocol from your existing international registration, or file a national application with the Superintendency of Industry and Commerce (SIC). Neither is better in the abstract. The right one depends on how solid your basic mark is at home, how much control you need over the goods list, and whether Colombia is one of several countries or the market that carries the business. We advise on that choice and then file, by either route.
First, a trap for anyone planning from Decision 486 alone
Foreign counsel who read the Andean text and stop there reach the wrong conclusion about classes. Article 138 of Decision 486 of the Commission of the Andean Community says an application «deberá comprender una sola clase de productos o servicios» [unofficial translation: shall cover a single class of goods or services]. Decision 486 has no official English version, which is why the rules here are quoted in Spanish with an unofficial translation.
Colombian domestic law moved past that. Article 168 of Decree Law 019 of 2012 established the multi-class system in these terms: «El registro de una marca podrá solicitarse en un sólo expediente administrativo para distinguir productos y/o servicios comprendidos en diferentes clases de la Clasificación Internacional de Niza» [unofficial translation: registration of a mark may be applied for in a single administrative file covering goods and/or services in different classes of the Nice Classification]. So a national Colombian application can cover several classes at once, exactly as a Madrid designation does. Official fees are still calculated per class on both routes, which is where the cost difference actually sits.
The point is not academic. Number of classes is the reason most holders assume Madrid is cheaper in Colombia, and on that ground alone it usually is not. The decision has to be made on the two things that really differ, which are dependency and control.
Dependency: five years in which your Colombian rights are not your own
A Madrid registration is not free-standing at the start. Under Article 6 of the Protocol, for five years from the date of the international registration it remains dependent on the basic application or registration at your home office. If within that period the basic mark is withdrawn, lapses, is renounced, or is the subject of a final decision of rejection, revocation, cancellation or invalidation, the international registration ceases to have effect in respect of all or some of the goods and services it lists.
Two extensions of that rule matter. It also applies where an appeal, action or opposition had begun before the expiry of the five-year period and ends against the basic mark afterwards; and where the basic application is withdrawn or renounced after the five years, if such a proceeding was already under way at that moment. The office of origin notifies the International Bureau and, where applicable, requests cancellation of the international registration.
That is the central attack: a competitor who cannot beat you in Colombia can attack your mark at home and bring every designation down at once. It is not a theoretical risk for holders whose basic mark is new, broadly worded, or already opposed in its own office.
Transformation, and what it really costs
There is a remedy, and it is worth understanding before you choose rather than after. Article 9quinquies allows transformation: where the international registration is cancelled at the request of the office of origin under Article 6(4), the former holder may file a national application in a designated country within three months of the cancellation, and that application is treated as filed on the date of the international registration or of the recording of the later territorial extension, keeping any priority it enjoyed.
Three conditions travel with it. The goods and services must be covered by the list of the international registration in respect of that country; the application must meet every requirement of the national law, official fees included; and the three months run from the cancellation, not from when you hear about it. Transformation saves the date, not the money: it is a fresh national filing, paid nationally, in every country you want to keep.
The rule we apply in practice: if the basic mark is registered, mature and unchallenged, dependency is a manageable risk and Madrid is usually the better fit. If it is a fresh application, or one already facing an opposition at home, and Colombia is a market that matters, a national filing here is the sounder structure even where it looks more expensive on paper.
Control: who drafts the application for the Colombian examiner
Through Madrid you file once with your own office, in one language, and designate Colombia. You need no representative here unless something goes wrong. The moment it does, a Colombian deadline starts running under Colombian law rather than under the Protocol, which is covered on our page about provisional refusal in Colombia.
Nationally, foreign applicants in practice act through a Colombian attorney from day one and file under Decision 486. Article 139 sets out what the request form must contain, including the express indication of the goods or services and of the class. Article 140 is the one to respect: the filing date is the date the office receives the application, provided that at that moment it already contained the indication that registration is sought, the applicant’s identifying or contact details, the mark or its reproduction, the express indication of the goods or services, and the proof of payment of the official fees. That article closes by providing that if any of those is missing the application «sea considerada por la oficina nacional competente como no admitida a trámite y no se le asignará fecha de presentación» [unofficial translation: shall be considered by the competent national office as not admitted for processing and shall not be assigned a filing date]. In other words, no payment means no filing date.
Goods and services are classified under the Nice Classification, which Article 151 adopts, and that same article adds something useful in a dispute: the classes «no determinarán la similitud ni la disimilitud de los productos o servicios indicados expresamente» [unofficial translation: shall not determine the similarity or dissimilarity of the goods or services expressly indicated].
That is where the real advantage of the national route lies. A Colombian application is drafted for this examiner from the start: the list of goods is written the way this office reads it, the mark is described as local practice expects, and a foreseeable objection is dealt with before it is raised. A Madrid designation arrives with the list as filed at home, and many of the refusals we see originate there.
You do not have to choose once and forever
Article 3ter of the Protocol allows a subsequent designation: a territorial extension may be requested in the international application or later, and it takes effect from the date it is recorded in the International Register, expiring with the international registration it belongs to. A holder who left Colombia out at the beginning can add it afterwards without starting over.
The routes can also coexist. Holding a Madrid portfolio across a region while filing nationally in the one or two countries that carry the business is a legitimate structure, and often the right one.
How we advise
Send us the mark, the classes you need in Colombia and the status of your basic mark at home. We come back with a clearance search result, the route we recommend and why, and the cost of each in writing before anything is filed. We act as local representative before the SIC on either route, so the recommendation does not depend on which one earns us more.
The proceeding is conducted in writing, with filings made electronically, and nothing requires you to travel. More than 20 years of practice and more than 3,000 trademarks handled mean we have seen both routes succeed and fail here, which is the only basis on which the choice can be advised honestly.
To start with the filing itself, see trademark registration in Colombia. If a third party opposes, see trademark oppositions and appeals before the SIC.
Frequently asked questions
Can a Colombian national application cover several classes?
Yes. Article 138 of Decision 486 refers to a single class, but Article 168 of Colombian Decree Law 019 of 2012 established the multi-class system, so one application may cover goods and services in different classes of the Nice Classification. Official fees are still calculated per class, on this route and on Madrid alike.
What is the central attack and does it reach Colombia?
Yes. Under Article 6 of the Madrid Protocol the international registration depends on the basic mark for five years from the date of the international registration. If in that period the basic mark is withdrawn, lapses, is renounced or is the subject of a final decision of rejection, revocation, cancellation or invalidation, the international registration ceases to have effect for all or some of its goods and services, and the Colombian designation falls with it.
If my international registration is cancelled, do I lose Colombia?
Not where the cancellation is made at the request of the office of origin under Article 6(4). In that case Article 9quinquies allows transformation into a national application filed within three months of the cancellation, which keeps the date of the international registration or of the recording of the later territorial extension and any priority it enjoyed, provided the goods are covered by the international list and the national requirements and fees are met.
Can I add Colombia to an international registration I already have?
Yes. Article 3ter of the Protocol allows a subsequent designation, which takes effect from the date it is recorded in the International Register and expires with the international registration.
Do I need a Colombian attorney for a Madrid designation?
Not to designate Colombia. In practice you do the moment a provisional refusal or an office action arrives, because from then on the matter runs under Colombian procedure and in Spanish.
What can cost me the filing date in Colombia?
Missing any of the minimum content listed in Article 140 of Decision 486, including the proof of payment of the official fees. That article provides that the application is then not admitted for processing and no filing date is assigned to it.
Talk to a lawyer
Send us a message on WhatsApp with your mark, the classes you need in Colombia and the status of your home registration, and we will come back with the route we recommend and the cost of each. An initial inquiry does not create an attorney-client relationship.