You designated Colombia through the Madrid Protocol and WIPO has notified you of a provisional refusal, or the Colombian office has issued an office action (requerimiento) that you cannot respond to without a Colombian representative. A domestic deadline starts to run from the Colombian notification, not from the day WIPO’s notice reached you, and it is Colombian law, not the Protocol, that decides how long you have. We are trademark attorneys in Colombia acting as local representatives for Madrid Protocol holders: we read the refusal, establish the actual deadline in the file at the Superintendency of Industry and Commerce (SIC), and file the response.
Why a refusal can reach you long after you expected it
Colombia deposited its instrument of accession to the Madrid Protocol on May 29, 2012, and the Protocol entered into force in respect of Colombia on August 29, 2012, under WIPO notification Madrid (Marks) No. 195.
That same notification records the declarations Colombia made, and two of them matter to every holder. Under Article 5(2)(b) of the Protocol, Colombia declared that the one-year time limit for notifying a refusal is replaced by eighteen months. Under Article 5(2)(c), a refusal based on an opposition may be notified to the International Bureau after that eighteen-month period has expired.
Two details of that period are worth getting right. It does not run from your international registration or from the date you designated Colombia: under Article 5(2)(a) it runs from the date the International Bureau sends the notification of the extension to the Colombian office. And the late refusal allowed by Article 5(2)(c) is not open-ended: it applies only where the office informed the International Bureau, before the eighteen months expired, that oppositions might still be filed, and the refusal must then be notified within one month from the end of the opposition period and in any case no later than seven months from the date that period began.
So eighteen months of silence do not by themselves mean your Colombian designation is safe: if a third party filed an opposition, a refusal can still arrive within those limits. Treating the eighteen-month mark as a finish line is the most common and most expensive mistake we see in these files.
The Protocol sets the office’s deadline; Colombian law sets yours
Article 5 governs how long Colombia has to refuse. It does not govern how long you have to answer. Once the refusal is issued, the procedure is the Colombian one, governed by Decision 486 of the Andean Community, and the deadline depends on what kind of refusal you received.
Decision 486 of the Commission of the Andean Community has no official English version, so the rules below are quoted in Spanish, with an unofficial translation in brackets.
If the refusal follows an opposition, Article 148 applies: the office notifies the applicant «para que dentro de los treinta días siguientes haga valer sus argumentaciones y presente pruebas, si lo estima conveniente» [unofficial translation: so that, within the following thirty days, it may put forward its arguments and submit evidence if it sees fit], and on request it grants, once only, an additional thirty days for evidence alone. If what you received is a formalities objection, Article 144 gives sixty days from notification to complete the missing requirements, and warns that otherwise the application «se considerará abandonada y perderá su prelación» [unofficial translation: shall be deemed abandoned and shall lose its precedence]. Article 150 then applies either way: the registrability examination takes place once the Article 148 term has expired or, where no opposition was filed, directly; and where an opposition was filed the office rules on the opposition and on grant or refusal by a resolution, which is the decision you may then challenge.
There is one case Decision 486 does not cover with a term of its own: a provisional refusal raised by the office on its own examination, with no opposition behind it. There the period to respond comes from Colombian domestic procedure and from the refusal itself. In every case, Rule 17(2)(vii) of the Regulations under the Protocol requires any notification of provisional refusal, ex officio or opposition-based, to state the time limit for filing a request for review or an appeal, and the authority with which it must be filed. Read that paragraph of your notification first; it is the one that binds you.
Decision 486 settles how those terms are counted, and the answer works in your favour. Article 5 provides that «cuando los plazos se señalen por días, se entenderá que éstos son hábiles» [unofficial translation: where terms are set in days, they are understood to be business days] and that where the last day is a non-business day the term runs to the next business day. Article 4 adds that terms subject to notification are counted «a partir del día siguiente» [unofficial translation: from the day following] the notification, not from the day the document was issued. Even so, the first thing we do is not to draft: it is to pull the file and establish the exact expiry date, in writing, before anything else.
What the refusal usually says, and what it really means
Most refusals in Colombia rest on Article 136(a) of Decision 486. The article bars registration of «aquellos signos cuyo uso en el comercio afectara indebidamente un derecho de tercero, en particular cuando: a) sean idénticos o se asemejen, a una marca anteriormente solicitada para registro o registrada por un tercero, para los mismos productos o servicios, o para productos o servicios respecto de los cuales el uso de la marca pueda causar un riesgo de confusión o de asociación» [unofficial translation: signs whose use in commerce would unduly affect a third party’s right, in particular where they are identical or similar to a mark previously applied for or registered by a third party, for the same goods or services, or for goods or services in respect of which the use of the mark may cause a likelihood of confusion or association].
Two things follow. First, a refusal citing a mark you have never heard of is common and is rarely fatal: what matters is how close the signs and the goods really are. Second, the response is not a translation of the arguments that worked in your home jurisdiction. In practice, examiners here compare signs visually, phonetically and conceptually, and weigh the trade channels and the relevant consumer, so the response has to be built for that examination.
What happens if you do not respond
The file does not freeze and wait for you. If the refusal came from an opposition and you let the term lapse, the office still rules, but it rules with your opponent’s case on the record and none of yours. If what lapsed was a formalities objection in the national proceeding, Article 144 is explicit that the application is deemed abandoned and loses its precedence over later filings. For an international designation the effect is best stated precisely: what is lost is protection in Colombia, not the precedence of your international registration, whose formal examination belongs to the office of origin and to the International Bureau.
There is a separate route, but it points at the other side’s registration rather than at your abandoned application. Where a registration was granted in breach of Article 136 or in bad faith, Article 172 of Decision 486 allows a relative nullity action against it, and states that «Esta acción prescribirá a los cinco años contados desde la fecha de concesión del registro impugnado» [unofficial translation: this action shall be time-barred five years from the date of grant of the challenged registration]. It is a window to act against a cited mark, not a substitute for answering your own refusal on time.
How we work with holders and with foreign counsel
Send us the WIPO notification, the international registration number and, if you have it, the Colombian file number. We aim to send a short written opinion within one business day of receiving the documents: what was refused, on what ground, which mark is cited, the applicable term and our candid assessment of the prospects. Confirming the exact expiry date requires access to the file at the SIC, so that date is given once we have consulted it. If the case is weak we say so before you spend on a response, because limiting the goods or negotiating a letter of consent is sometimes the better outcome.
We act as local representative before the Colombian office, so nothing requires you to travel: the proceeding is conducted in writing and filed electronically. We work both directly for holders and as Colombian correspondents for trademark firms abroad, reporting in English, with flat fees quoted in advance rather than hourly billing. More than 20 years of practice and more than 3,000 trademarks handled mean we know how these grounds are usually argued before this office, which is what separates a refusal worth fighting from one worth settling.
If you have not filed yet and are deciding between a Madrid designation and a national application, start with trademark registration in Colombia. If the issue is an opposition rather than a refusal, see trademark oppositions and appeals before the SIC. Spanish-speaking holders and foreign counsel can read the same material in Spanish at denegación provisional en Colombia.
Frequently asked questions
How long do I have to respond to a provisional refusal in Colombia?
It depends on the type of refusal. Where it follows an opposition, Article 148 of Decision 486 gives thirty days, plus a single additional thirty-day term granted on request for evidence only. Where it is a formalities objection, Article 144 gives sixty days. Under Articles 4 and 5 of the same Decision those days are business days and are counted from the day following the notification. Where the refusal comes from the office’s own examination, the term is the one stated in the notification itself.
Can Colombia refuse my mark after eighteen months?
Yes, if the refusal is based on an opposition. Colombia declared both the eighteen-month refusal period under Article 5(2)(b) of the Madrid Protocol and, under Article 5(2)(c), the possibility of notifying an opposition-based refusal after that period expires. That late refusal is bounded: the office must have warned the International Bureau before the eighteen months ran out, and must notify within one month from the end of the opposition period and no later than seven months from its start.
Do I need a representative in Colombia to respond?
In practice, yes: the response is filed in the Colombian proceeding, in Spanish, and holders abroad appoint a local attorney to act for them. Appointing us requires a power of attorney signed by the holder, with no travel; we tell you in advance what form it must take.
What happens to my international registration if the Colombian designation is refused?
A refusal affects protection in Colombia only. Your international registration and the other designations are unaffected, which is why a refusal in one country is worth answering on its own terms rather than abandoning the file.
The refusal cites a mark I have never heard of. Is the case lost?
No. Article 136(a) of Decision 486 covers two situations: identical or similar signs for the same goods or services, or for goods or services where use of the mark may cause a likelihood of confusion or association. How close the cited mark really is, and whether the goods actually meet in the market, is precisely what the response argues.
Do you work with foreign trademark firms as local counsel?
Yes. We act as Colombian correspondents for firms abroad, report in English, and quote the fee before the work starts.
Talk to a lawyer
Send us a message on WhatsApp with your international registration number and we will come back to you with the deadline and the options once we have reviewed the notification. An initial enquiry does not create an attorney-client relationship.
If you are still choosing between the two routes for a new mark, see Madrid Protocol or national filing in Colombia.