Information for Review under TRIPS Art. 24.2 (Checklist of Questions on GIs) - View details of the document

Colombia
Matters relating to unfair competition in respect of industrial property are regulated by Articles 258 and 259, Title XVI, Chapter I, of Andean Commission Decision 486 (Annex 1).2 The general way in which these Articles are worded means that they can be applied to ensure protection against appellations of origin and indications of source that are false, misleading or liable to confuse consumers, through the actions provided for such purpose in Chapter III of the same Title. In any event, in accordance with Article 2693, specific conduct and the procedure to be followed in order to counteract such conduct are governed by domestic legislation, namely Law No. 256 of 1996 and Law No. 446 of 1998. The procedure for declaring appellations of origin shows that the competent national office may refuse protection if the indication is liable to mislead the public as to the geographical origin, nature, method of manufacture or quality, reputation or other characteristics of the products concerned. In the specific case of appellations of origin, these must be have been declared as such by the competent national office in order to be eligible for protection, pursuant to Article 2144 of Decision 486 and following the procedure set forth in Articles 202 to 211 of that same instrument. In the case of appellations of origin of other Member Countries or third countries, the declaration may be made under the terms of Articles 218 and 219 of Decision 486 with a view to the recognition of protection. As to indications of source, the definition thereof (Article 2215) infers that no formal declaration is required, although the conditions of use are limited to those laid down in Articles 222 and 2236 of Decision 486.
The only regime is that established in Andean Commission Decision 486 and, according to the definition given in Article 2017 of the Decision (Title XII "Geographical Indications", Chapter I "Appellations of Origin"), this protection mechanism is limited to products which do not differ from each other in respect of type or kind, except as regards the level of protection specified in Article 215.8 As far as indications of source are concerned, the parameters for use laid down in Article 222 of the Andean Decision cover products and services alike.
Only in the case of indications of source does the protection regime extend to services, as stated in Article 222 of Decision 486.
The regulatory instrument protecting geographical indications within the meaning of Articles 22.2 and 23.1 of the TRIPS Agreement is Andean Commission Decision 486, which also applies to the other countries of the Andean Community. This instrument broadly regulates the issue under Title XII "Geographical Indications", classifying such indications as appellations of origin and indications of source. Colombia has issued a number of provisions, above all in respect of procedure, through Single Circular No. 10 of 19 July 2001.
See affirmative reply to question 4 above. [Answer 4: The regulatory instrument protecting geographical indications within the meaning of Articles 22.2 and 23.1 of the TRIPS Agreement is Andean Commission Decision 486, which also applies to the other countries of the Andean Community. This instrument broadly regulates the issue under Title XII "Geographical Indications", classifying such indications as appellations of origin and indications of source. Colombia has issued a number of provisions, above all in respect of procedure, through Single Circular No. 10 of 19 July 2001. ]
So far, protection has been afforded to the appellations of origin "Pisco Peruano" and "Café de Colombia". The following applications are currently being examined: • "Cristal" for an alcoholic beverage (from Colombia) • "San Agustín" for coffee (from Colombia) • "Cholupa de Huila" for a fruit (from Colombia) • "Artesanias de Guacamayas" for handicraft products (from Colombia) • "Saint Emilion" for ham ("de talia")
No, the higher level of protection under Article 23.2 of the TRIPS Agreement is provided only for wines and spirits within the meaning of Article 215 of the Andean Decision.
In this respect, the first paragraph of Article 215 of Decision 486 provides that: Article 215 – Member Countries shall prevent use of a geographical indication identifying wines or spirits for goods of this kind not originating in the place indicated by the appellation of origin in question, even where the true origin of the goods is indicated or the appellation of origin is used in translation or accompanied by expressions such as 'kind', 'type', 'style', 'imitation', or the like. Member Countries may not prevent continued and similar use of a particular appellation of origin of another country identifying wines or spirits in connection with goods or services by any of their nationals who have used that geographical indication in a continuous manner with regard to the same or related goods or services within the territory of the respective Member Country for at least 10 years preceding 15 April 1994 or, in good faith, prior to that date.
Geographical indications as such are not defined in the Andean Decision, but the term covers the following definitions of appellation of origin and indication of source: Article 201: An appellation of origin shall be understood to be a geographical indication consisting of the name of a particular country, region or place, or of a name which, without being that of a particular country, region or place, refers to a specific geographical area, and is used to designate a product originating therein, the qualities, reputation or characteristics of which are exclusively or essentially attributable to the geographical environment in which it is produced, including both natural and human factors. Article 221: An indication of source shall be understood to be a name, expression, image or sign that indicates or evokes a particular country, region, locality or place.
The definition in Article 201 implies more than an indirect link since it establishes that the geographical indication must be used to designate a product which originates in the region, country or place in question and the characteristics of which are exclusively or essentially attributable to the geographical environment in which it is produced.
None of the regulatory provisions cited specifically lists the criteria to be considered when determining whether to declare protection; from these provisions, it is, however, possible to establish the following: (a) The appellation does not necessarily have to be the name of a particular country, region or place (Article 201); (b) the appellation must refer to a specific geographical area (Article 201); (c) the appellation must be used to designate a product originating in that area (Article 201); (d) the quality, reputation, or other characteristics of the product must be exclusively or essentially attributable to the geographical environment in which it is produced, including both natural and human factors (Article 201); (e) appellations must not incur any of the grounds for refusal expressly set forth in Article 202, i.e: • be inconsistent with the definition in Article 201; • be common or generic terms that distinguish the product concerned, namely, terms considered as such both by persons with knowledge of the area concerned and by the general public; be contrary to good morals or to public order; or be liable to mislead the public as to the geographical origin, nature, method of manufacture, or the quality, reputation or other characteristics of the products concerned. (f) Protection may be declared ex officio by the competent national office, which in Colombia is the Supervisory Authority for Industry and Trade (Superintendencia de Industria y Comercio) (Article 203 of Decision 486 establishing the Andean industrial property regime and Article 29 of Decree No. 2153 of 1992 restructuring the Supervisory Authority for Industry and Trade); (g) The declaration may be made at the request of a party with a legitimate interest therein, i.e. any of the following (Article 203)10: • Natural or legal persons directly engaged in the extraction, production or processing of the product that is to be protected; • associations of producers; and • State, provincial or municipal authorities in the case of geographical indications from their respective areas. (h) The declaration must be requested in writing, and the application must include the following (Article 204): • Name, domicile, place of residence and nationality of the applicant or applicants and proof of their legitimate interest; • the appellation of origin that is the subject of the declaration; • the particular geographical area within which the production, extraction or processing of the product to be identified by the appellation of origin takes place; • the products identified by the appellation of origin; and • a description of the qualities, reputation or other essential characteristics of the products identified by the appellation of origin.
The definition in Article 201 expressly provides that the human factors of the geographical environment in which the product originates may be included. The provision does not specify to what extent, but it is clear that in order to determine this, the competent national office must take into account whether the product is made wholly or in part by local human resources. For instance, the analysis carried out in respect of an entirely handcrafted product would not be the same as that for a natural product that is cultivated and extracted by local people.
In principle, they are not provided for in the legislation.
In specifying the content of an application for declaration of protection, Article 204 establishes that the applicant must identify a particular geographical area within which the production, extraction or processing of the product takes place. It should be noted that the application may be submitted only by persons, as defined in Article 203 of the Andean Decision, with a legitimate interest. Such persons would be the only ones able to define the area concerned and submit sufficient evidence for verification by the competent national office. If protection of the indication is declared ex officio, the competent national office will determine the relevant geographical area and must also use sufficient evidence to make such a decision. This responsibility would not only derive from the provisions setting the criteria for declaring protection, but also from the general provisions governing the administrative proceedings brought before the competent national authority, that is, the Supervisory Authority for Industry and Trade.
There is no specific legislation in this regard.
Articles 218 and 219 of Decision 486 provide for the recognition of appellations of origin which are protected in another country.
Protection will be granted providing that the legal requirements of Decision 486 are met.
Title XII of Decision 486 is headed "GEOGRAPHICAL INDICATIONS", Chapter I is headed "APPELLATIONS OF ORIGIN" and Chapter II is entitled "INDICATIONS OF SOURCE", which appears to indicate that the first title refers to the generic category, while the other two refer to a kind or type. Decision 486 does not define geographical indications but does provide the following definitions of appellation of origin and indication of source: APPELLATIONS OF ORIGIN. ARTICLE 201: An appellation of origin shall be understood to be a geographical indication consisting of the name of a particular country, region or place, or of a name which, without being that of a particular country, region or place, refers to a specific geographical area, and is used to designate a product originating therein, the qualities, reputation or characteristics of which are exclusively or essentially attributable to the geographical environment in which it is produced, including both natural and human factors. INDICATIONS OF SOURCE. ARTICLE 221: An indication of source shall be understood to be a name, expression, image, or sign that indicates or evokes a particular country, region, locality or place.
Article 215 of Decision 486 provides further details in this respect: Article 215 – Member Countries shall prevent use of a geographical indication identifying wines or spirits for goods of this kind not originating in the place indicated by the appellation of origin in question, even where the true origin of the goods is indicated or the appellation of origin is used in translation or accompanied by expressions such as 'kind', 'type', 'style', 'imitation', or the like. Member Countries may not prevent continued and similar use of a particular appellation of origin of another country identifying wines or spirits in connection with goods or services by any of their nationals who have used that geographical indication in a continuous manner with regard to the same or related goods or services within the territory of the respective Member Country for at least 10 years preceding 15 April 1994 or, in good faith, prior to that date.
In the case of a formal system for recognition of geographical indications, applications for recognition of geographical indications (appellations of origin) may be made by either the competent national office or by whoever has a legitimate interest, namely natural or legal persons directly engaged in the extraction, production or processing of the product concerned, associations of producers, or the State, provincial or municipal authorities according to their respective areas (Article 203 of Andean Commission Decision 486).
The competent national authority in Colombia is the Supervisory Authority for Industry and Trade.
The competent national office may apply these procedures ex officio or at the request of a party.
A fee of 1,065,000 Colombian pesos is payable at the time of application for the declaration of protection of an appellation of origin or authorization to use such an appellation. The same amount is due for renewal of the authorization to use an appellation of origin, but if the application for renewal is filed during the grace period, the fee is 1,330,000 Colombian pesos. These fees increase annually in accordance with the rise in the consumer price index.
Generally speaking, the application must contain a description of the qualities, reputation and other characteristics of the product, including, where appropriate, aspects of a geographical nature, such as the geographical area. However, the characteristics that human factors can give to the product are also relevant and must therefore be specified.
Depending on each case, the criteria which may be set out in an application are those relating to the geographical area and natural and human factors.
The identity of the applicant (name, domicile, place of residence and nationality); demonstration of legitimate interest; the appellation of origin and the products which it is to designate; the particular geographical area within which the production, extraction or processing of the product takes place; and a description of the qualities, reputation or other essential characteristics of the products designated by the appellation of origin.
The products designated by the appellation of origin must be specified.
Although not indicated in the specific provisions of Title XVI of Decision 486, the procedure applied by analogy would be that established for objection to a trademark registration application, as set forth in Articles 146 to 150 of Decision 486.
This would depend on the grounds on which the objection is filed, but in principle it would have to be the holders of prior rights that are affected by the declaration. If the grounds are absolute (e.g. in the case of a generic term), it could be any interested party given that protection is a matter of public interest. The rules do not indicate this expressly, but in each case the legitimate interest prompting the procedure must be verified.
As stated above, the geographical indications of foreign countries are protected under Articles 218 and 219 of Andean Commission Decision 486.
Pursuant to Article 20610, the validity of a declaration of protection is subject to the continuing existence of the conditions on which it was based, as determined by the competent national office.
From the wording of Article 206 it may be concluded that the validity of a geographical indication is not subject to renewal or any other modality, apart from the requirement noted above.
It is also clear from Article 206 that it is not usage but the conditions that led to the declaration of protection which must be maintained over time. The provision also establishes the possibility to amend the declaration at any time in the event of a change in any of the elements indicated in the initial application.
There are no time limits, although there is, as has been said before, a limit in respect of the existence or validity of the conditions that led to the declaration. Thus, if the conditions no longer obtain, the competent national authority may terminate the validity of protection. Interested parties may, however, submit a new application if the conditions have been restored (Article 206). In any case, interested parties may still amend the declaration of protection in the event of a change in the elements that determined the declaration, which would be perfectly justified in order to ensure its continuing validity.
Monitoring is the responsibility of the competent national office, which in Colombia's case is the Supervisory Authority for Industry and Trade.
Pursuant to Andean Decision 486 (Article 213), public or private entities representing the beneficiaries of appellations of origin will have the mechanisms needed to ensure effective monitoring of the use of protected appellations of origin. The competent national office may declare the validity of an appellation of origin to be terminated if the conditions under which it was declared no longer obtain.
Under Colombia's current legislation, a request to that effect may be filed ex officio by the administrative authority or at the request of a party.
In principle, Decision 486 does not provide for forfeiture of a geographical indication, so to implement this procedure it is necessary to make use of general domestic provisions that relate to the monitoring of the legality of administrative acts. In this case, the declaration of protection is made by the competent national office through a duly reasoned administrative act and it is therefore the Council of State that has jurisdictional control over these acts. Thus, administrative acts declaring the protection of appellations of origin may be declared null and void if any of the general grounds established by domestic provisions exist. More specifically, such a procedure may be initiated only at the request of a party.
Pursuant to Article 212, use of a geographical indication in connection with natural, agricultural, handicraft or industrial products from Andean Community Member countries is reserved exclusively for producers, manufacturers or craftsmen whose production or manufacturing establishments are in the specified place or region. It may be inferred from Article 207 that in any case use of a geographical indication requires authorization, which must be requested by persons that are either: (a) directly engaged in the extraction, production or processing of the products identified by the appellation of origin; (b) that conduct the said activity within the geographical area specified in the declaration of protection; or (c) that comply with other requirements imposed by the competent national offices. Applications must follow the procedure set forth in Articles 208 to 211 of Decision 486, which differs from the procedure for declaring an appellation of origin: Article 208: The competent national office may grant the corresponding authorization for use. Authorization for use may also be granted by the public or private entities representing the beneficiaries of the appellations of origin, where domestic legislation so provides. Article 209: Where authorization for use falls within the competence of the competent national office, it shall be granted or denied within 15 days of the date when the application was filed. Article 210: Authorization to use a protected appellation of origin shall be for a term of 10 years and may be renewed for successive 10-year periods, in accordance with the procedure stipulated in this Decision for the renewal of trademarks. Article 211: Authorization to use a protected appellation of origin shall expire if its renewal is not requested within the period stipulated in this Decision for the renewal of trademarks. Failure to pay the fees laid down in the domestic legislation of each Member Country shall likewise constitute grounds for expiry.
The decision to authorize use of an appellation may be made by the competent national office. The public or private entities representing the beneficiaries of appellations of origin may, however, also grant such authorization, pursuant to Article 208 of Andean Commission Decision 486 of 2000.
For 2007, a fee of 1,065,000 Colombian pesos (year 2007) is payable upon the filing of an application for authorization to use an appellation of origin. Every application for renewal entails payment of the corresponding fees at the rate applicable at the time. If, however, renewal is requested during the grace period, a surcharge is due in accordance with Supervisory Authority for Industry and Trade Decision No. 36155 of 28 December 2006. The fees are determined annually by the competent national office in accordance with Article 277 of Decision 486. The rates are adjusted annually under a resolution issued by the Supervisory Authority for Industry and Trade and published in Single Circular No. 10 of 2001.
If the dispute concerns use by unauthorized third parties, it is resolved under the procedure relating to infringements of industrial property rights set forth in Article 238 of Decision 486, which covers reports of infringement and compensation for damages where appropriate. However, if the dispute concerns the legal consistency of the administrative act granting authorization to use an appellation of origin in violation of Decision 486, an action of annulment will be brought before the competent national authority (Council of State). If the dispute concerns non-use or use of the appellation in terms that are not consistent with the declaration, it will be resolved through the trademark cancellation procedure.12
In accordance with Article 217, the cancellation of authorization to use appellations of origin is governed by the provisions relating to the cancellation of trademarks. We therefore refer to those provisions. In the case of trademarks, Article 165 provides for the possibility of cancellation in the event of non-use within the three-year period preceding the granting of registration, so the same term could apply to appellations of origin. Use is therefore a requirement for retaining the right to authorization and must be consistent with the relevant declaration of protection.
As stated in the third paragraph of the reply to question 39.
Pursuant to Article 212, only parties that have received authorization to use an appellation of origin may do so. This prevents such parties from granting licences to third parties for use of the appellation.13
This provision of the TRIPS Agreement is set forth in the second paragraph of Article 215 of Decision 486.14
Article 24.5 of the TRIPS Agreement applies in this respect.
In application of Article 24.5 of the TRIPS Agreement and general domestic provisions, the annulment of such administrative acts may be requested if the declaration has already been granted. If the declaration of protection is pending, the opposition procedure for trademarks applies by analogy.
In the case of an ongoing application for trademark registration, the holders of the geographical indication may oppose registration on the grounds set forth in paragraphs (j), (k) and (l) of Article 135 of Decision 486. The objection will be processed in accordance with Articles 146 to 150 of Decision 486. If the trademark has already been awarded, governmental channels may be used to challenge the decision granting the trademark through reconsideration or appeal, with, ultimately, the option of filing for annulment of the corresponding administrative act with the administrative courts in accordance with Article 172 of Decision 486 and following the procedure established for the purpose in the Administrative Disputes Code.15 In the opposite situation, where it is necessary to safeguard a trademark right in the event of an application for protection of a geographical indication, the procedure does not provide for the filing of objections, but decisions by the competent national office are subject to jurisdictional control under domestic law (Administrative Disputes Code).
Yes, this is provided for as grounds for non-eligibility for registration in Article 135(k): Signs may not be registered as trademarks when they: (j) reproduce, imitate, or contain a protected indication of origin that is liable to create confusion or a mistaken association with the indication in relation to the goods themselves or different goods, or that involves taking unfair advantage of the well-known character of that appellation among the public; (k) contain a protected appellation of origin for wines and spirits; or (l) consist of a national or foreign geographical indication liable to cause confusion with regard to the goods or services to which it applies.
Article 214 establishes that protection of appellations of origin begins with a declaration by the competent national office. From then on, use of such appellations by unauthorized parties in a manner that is likely to create confusion is deemed to constitute an infringement of industrial property rights. Title XV, Chapter 1, of Decision 486 sets forth the actions for infringement of rights, most notably in Articles 238, 241, 242 and 243. Since the Decision does not establish any procedure for instituting such actions, in Colombia's case the ordinary procedure laid down in the Code of Civil Procedure (Articles 396 and 397) would be followed. Indeed, actions for which there is no specific procedure or which are not provided for in other types of procedure (summary or oral) must go through the courts. Chapter 2 (Articles 245 to 249) of Decision 486 provides for the possibility of ordering provisional measures for the benefit of any party initiating or preparing to initiate an action for infringement of rights for the purposes of preventing an infringement from occurring, avoiding its consequences, obtaining or preserving evidence, or ensuring the effectiveness of the action or compensation for damages. Articles 258 and 259 of Title XVI, Chapter I, of Andean Commission Decision 486 (Annex 1) regulate matters relating to "unfair competition linked to industrial property".16 The general way in which these Articles are worded means that they can be applied to ensure protection against appellations of origin and indications of source that are false, misleading or liable to confuse consumers, through the actions provided for such purpose in Chapter III of the same Title. In any event, in accordance with Article 269,17 specific conduct and the procedure to be followed in order to counteract such conduct are governed by domestic legislation, namely Law No. 256 of 1996, in particular Article 15 thereof, and Law No. 446 of 1998.
Pursuant to the above-mentioned provisions, the relevant actions must be initiated at the request of the holder of the protected right (Article 238 of Decision 486). Nevertheless, it is provided that where domestic legislation permits, the competent national authority may take action ex officio. In Colombia, actions for unfair competition must be initiated at the request of a party, in accordance with Article 21 of Law No. 256/96.18
In the case of legal action, the competent judges are the circuit judges dealing with civil matters, as provided for in Article 614 (repealed) of the Commercial Code, Code of Civil Procedure, Article 17, Executive Decree No. 2273/89, Article 3: Article 17: Exclusive jurisdiction of the circuit judges of Bogotá. Amended by Decree No. 2273 of 1989, Article 3. The expert circuit judges of Bogotá who deal with civil matters are competent to hear proceedings concerning patents, industrial designs, trademarks, trade signs and names and other industrial property matters at the first level that are not dealt with by the administrative authorities or the administrative courts. In the case of actions for unfair competition, Article 20 of Law No. 256 of 1996 and Article 147 of Law No. 446 of 1998 define the jurisdiction in respect of prevention that is given to the Supervisory Authority for Industry and Trade, in the exercise of jurisdictional functions, or to the civil courts, depending on the nature of the procedure, pursuant to Article 17 of the Code of Civil Procedure. For actions relating to the legality or illegality of acts granting recognition of appellations of origin, the competent body is the Council of State. In such cases, no fees are payable to the competent bodies, but in the event of legal action, the costly services of a legal counsel are required.
Although Decision 486 does not expressly provide for this aspect of the procedure, Article 205 specifies that the procedure to be followed is that which applies to the examination of formal requirements for trademarks. The competent national office thus publishes a summary of the application in the industrial property gazette for the information of third parties that might wish to oppose the declaration of protection. Once protection is granted, the relevant declaration must be published in the industrial property gazette, as must any administrative act conferring rights (in accordance with general domestic rules).
Infringement of protected appellations of origin does not constitute an offence in Colombia and is therefore not subject to criminal action.
No.
Free Trade Agreement with Mexico.