Through intellectual property and unfair competition litigation, trademarks, patents, industrial designs, copyrights and other business assets may be protected against infringement, unauthorized use and conduct contrary to commercial good faith. Cárdenas Vega Asesores represents rights holders, applicants, opponents, claimants and defendants in administrative, judicial and out-of-court proceedings involving these matters.
Each dispute requires an analysis of the rights involved, the challenged conduct, the available evidence, the risks associated with the proceedings and the measures that may be taken to stop the infringement, prevent harm, defend a legal position or seek compensation. Accordingly, before initiating any proceeding, it is essential to define a strategy tailored to the particular circumstances of the case.
Intellectual property litigation
Intellectual property rights are valuable assets for businesses and rights holders. Their protection may require preventive measures, direct negotiations, interim relief, administrative proceedings or court litigation, depending on the nature of the right and the alleged infringer’s conduct.
Cease-and-desist letters and other deterrent measures
Formal demands or cease-and-desist letters allow a rights holder to notify an alleged infringer of the existence of a right and request that the infringer discontinue certain conduct, withdraw specific items from the market, provide information or undertake commitments intended to prevent or resolve a dispute.
The advisability of sending such a communication should be assessed in advance. In some cases, it may facilitate a swift and proportionate resolution; in others, it may alert the alleged infringer, lead to the disappearance of evidence or undermine the effectiveness of subsequent interim relief. For this reason, any formal communication should form part of a defined legal and evidentiary strategy.
Applications for and defense against interim relief
In proceedings involving the infringement of industrial property rights, a party may apply for interim relief intended to prevent the continuation of an infringement, avert its consequences, preserve evidence or ensure the effectiveness of a future judgment.
Depending on the circumstances, such measures may include the immediate cessation of certain acts, the withdrawal of products from commercial channels, the suspension of imports or exports, the temporary closure of business establishments, the provision of security or other relief available under applicable law.
Cárdenas Vega Asesores represents both parties seeking interim relief and parties required to defend against such applications. The availability, scope and timing of interim relief depend on establishing the legal requirements under the applicable regulations and on a case-specific assessment of the available evidence.
Border measures
A trademark owner who has reasonable grounds to believe that goods infringing its rights are to be imported or exported may request the suspension of the relevant customs operation in accordance with the applicable legal framework.
Border measures require the proper identification of the relevant rights, the goods concerned and the potential infringement. They may also require the timely submission of information, evidence and security, as well as the subsequent commencement of the appropriate proceedings within the applicable statutory periods.
Conciliation and out-of-court settlements
Conciliation may be used to pursue a negotiated resolution, establish obligations to cease certain conduct, regulate the future use of a sign, agree on financial terms, arrange the modification of distinctive elements or resolve other aspects of a dispute.
Where conciliation constitutes a mandatory pre-litigation requirement, completing the proceeding makes it possible to demonstrate compliance with that requirement before filing a claim. If a valid settlement is reached, the conciliation agreement produces the legal effects prescribed by law and may constitute an enforceable instrument.
Trademark, patent and other intellectual property infringement actions
Infringement actions seek the effective protection of an industrial property right against acts carried out without the authorization of its owner. Depending on the circumstances, such actions may be brought before the ordinary courts or the Colombian Superintendency of Industry and Commerce, acting in the exercise of its judicial powers.
Among other remedies available under applicable law, a claimant may seek an order requiring the cessation of the infringing acts, the withdrawal of the relevant products or materials, the implementation of corrective measures and compensation for proven loss and damage.
The viability of the proceedings depends on factors such as the existence and scope of the right, the parties’ standing, the conduct alleged, the territory in which it occurred, any applicable defenses or exceptions and the sufficiency of the evidence.
Criminal proceedings for infringement of industrial property rights or copyright
Certain conduct involving the infringement of trademarks or patents or the violation of moral or economic rights under copyright law may give rise to criminal liability. Where there are grounds to infer the possible commission of a criminal offense, the matter may be reported to the Colombian Attorney General’s Office.
Filing a criminal complaint requires a clear description of the relevant facts, identification of the rights allegedly infringed and submission of the available physical evidence and supporting materials. The existence of a commercial or civil dispute does not, in itself, establish that a criminal offense has been committed.
Trademark oppositions, cancellation actions and appeals
Filing and responding to trademark oppositions
Once a trademark application has been published, third parties who consider that the applied-for sign affects their rights or falls within a ground for refusal may file an opposition within the prescribed period.
The applicant may respond to any opposition filed, submit arguments and evidence, challenge the opponent’s allegations and defend the registrability of the sign. An opposition does not automatically result in the refusal of the application, as the competent authority must conduct a comprehensive examination of registrability.
Trademark cancellation actions
Andean Community Decision 486 provides for the cancellation of a trademark registration for non-use where, without legitimate reason, the mark has not been used in at least one Member Country during the three consecutive years preceding the date on which the cancellation action is filed.
The firm represents parties seeking cancellation and trademark owners required to establish genuine and effective use of their marks or demonstrate the existence of a legitimate reason for non-use. It also advises on cancellation proceedings based on genericide or well-known status where the requirements established under the applicable regulations are met.
Administrative appeals and direct revocation
Decisions issued by the Colombian Superintendency of Industry and Commerce in industrial property proceedings may be challenged through the administrative remedies available under applicable law. In particular, an appeal may be filed against certain decisions of the Directorate of Distinctive Signs so that the competent superior authority may review the decision issued at first instance.
Direct revocation is an exceptional administrative mechanism and does not replace administrative appeals or judicial remedies. Its availability depends on the grounds, requirements and limitations established under the Colombian Code of Administrative Procedure and Administrative Litigation.
Judicial review of administrative decisions
Administrative decisions issued by the Colombian Superintendency of Industry and Commerce may be subject to judicial review before the Administrative Courts through the appropriate judicial remedy.
The competent court, the relief sought, the parties’ standing and the applicable filing period depend on the nature of the administrative decision, the right at issue and the particular circumstances of the case. A case-specific assessment is therefore essential before commencing judicial proceedings.
Unfair competition litigation
Unfair competition encompasses conduct carried out in the market for competitive purposes that is contrary to commercial good faith and may affect competitors, consumers or other market participants.
Colombian Law 256 of 1996 regulates, among other conduct, diversion of clientele, disruption of a competitor’s business, acts of confusion, deception, disparagement, comparison and imitation, exploitation of another party’s reputation, misappropriation of trade secrets, inducement to breach contractual obligations, violation of statutory provisions and unfair exclusivity arrangements.
Claims involving acts of unfair competition
Unfair competition actions may be brought before the competent courts or the Colombian Superintendency of Industry and Commerce, acting in the exercise of its judicial powers. The appropriate forum should be determined in light of the particular circumstances of the matter.
Through a declaratory action seeking affirmative relief, a claimant may request a declaration that the challenged conduct is unfair, an order requiring its removal or cessation and an award of compensation for proven loss and damage. Where the conduct has not yet been completed but poses a certain and imminent threat, the availability of a preventive or prohibitory action may be assessed.
Defense against unfair competition claims
Defending an individual or company against an unfair competition claim requires an assessment of whether the challenged conduct had a competitive purpose, occurred in the market, affected or was capable of affecting interests protected by law and actually constitutes the alleged act of unfair competition.
The analysis must also address the parties’ standing, whether the action was brought within the applicable limitation period, causation, the existence of loss or damage and the appropriateness of the relief sought. An effective defense strategy should integrate the commercial, evidentiary and legal aspects of the dispute.
How is a litigation strategy developed?
Before commencing or defending any proceeding, a comprehensive assessment of the matter is advisable. This analysis may include:
- Identifying the right, interest or legal position to be protected.
- Verifying the ownership, validity and territorial scope of the relevant right.
- Identifying the material facts and the parties involved.
- Collecting, preserving and assessing the available evidence.
- Assessing interim relief, formal demands and negotiation mechanisms.
- Determining the competent authority and applicable procedure.
- Evaluating the risks, costs, timing and potential outcomes.
- Defining the claims, defenses and the client’s commercial objectives.
Not every dispute should immediately result in litigation. In certain cases, negotiation, conciliation or a strategically drafted formal demand may provide a more efficient solution. In others, effective protection of the relevant right requires immediate action to preserve evidence or prevent the continuation of the harm.
Specialized legal representation
Cárdenas Vega Asesores provides legal advice and representation in intellectual property and unfair competition disputes, from the initial assessment and development of the legal strategy through the filing or defense of claims, applications for interim relief, appeals and other available proceedings.
Our services are designed to protect each client’s legal and commercial interests through rigorous, personalized and results-oriented representation, while recognizing that every dispute requires a solution developed on the basis of its particular facts and evidence.