The possibility of filing trademark nullity claims before the Administrative Court became a reality

Until January 26, 2022, the competent authority to resolve a nullity claim in matters related to trademark law was the Council of State. However, with the entry into force of Law No. 2080 of 2021, it is now possible to request the annulment of the decisions of the Colombian Trademark Office before the First Section of the Administrative Court of Cundinamarca.

This change of jurisdiction makes it possible to shorten the resolution time of nullity proceedings, which took up to 10 years before the Council of State. Indeed, we expect that the nullity claims filed before the Administrative Court of Cundinamarca will take around 2 years.

In addition, this change also offers the plaintiff the possibility of appealing an unfavorable decision of the Court, since it will no longer be a single instance proceeding as it was before the Council of State. The foregoing also has the consequence of eliminating the systematical need to request the interpretation of the Court of Justice of the Andean Community, which participates in streamlining these proceedings.

Let us remember that, in trademark matters, nullity claims can have two objectives.

i. To revoke the rejection of a trademark application

The first objective consists of obtaining the nullity of the administrative decision that denied the registration of a trademark, and in this case, we talk about a “nullity and reinstatement of the right” action. The statute of limitation for this action is established by the Code of Administrative Procedure and Administrative Litigation to four months, and it will be necessary for the plaintiff to have first filed the applicable appeals before the Superintendence of Industry and Commerce.

ii. To revoke the decision to grant a trademark that affects the rights of the plaintiff

The second objective consists, on the contrary, in obtaining the annulment of the administrative decision that granted a trademark registration to a third party that affects the interests of the plaintiff. In this case, the statute of limitation is established by Decision 486 of the Andean Community of Nations.

If the trademark was registered in contravention of the absolute causes of unregistrability, when the sign is by nature not able to distinguish products and services in the market, we will speak of "Absolute Nullity", and the action has no statute of limitations.

If, on the other hand, the basis of the nullity action consists of prior rights or if the argument is based on the applicant's bad faith, we will then speak of "Relative Nullity", an action that benefits from a five year statute of limitation from the date of the decision to grant the registration.