A European consumer goods company discovered that a local distributor had filed a trademark application in Colombia covering the company's core brand – without authorisation. The distributor had been operating in the Colombian market for several years. When the commercial relationship soured, the distributor moved first. It registered the mark across multiple product categories under the Clasificación de Niza (Nice classification) system, positioning itself to block the brand owner entirely.
IP portfolio recovery in Colombia involves challenging a bad-faith IP registration before the Superintendencia de Industria y Comercio (Superintendency of Industry and Commerce. Colombia's principal IP registration authority) through cancellation or nullity proceedings under Colombian intellectual property legislation. A well-documented priority claim – supported by prior use evidence and international registration records – is the foundation of any successful challenge. Timelines for administrative proceedings typically run from several months to over a year, depending on complexity and the authority's caseload.
This case study examines how the matter was structured, the complications encountered along the way, and the transferable lessons that apply to any cross-border IP registration dispute in Latin American civil law systems.
Client profile and the challenge
The client was a mid-sized European manufacturer with a portfolio of registered trademarks across the EU and several Latin American markets. Colombia represented a growing revenue source. The distributor relationship had operated informally for several years, with no written IP assignment or licensing agreement in place.
When the distributor filed its trademark application, it did so across several Nice classification classes directly relevant to the client's product lines. The filing predated the client's own Colombian trademark application by several weeks. That timing gap was intentional. Under Colombian intellectual property legislation, priority in registration – rather than priority in use alone – carries significant weight. The distributor had calculated that a registered mark would give it leverage: either the client would pay to buy the mark back, or it would face an infringement claim if it continued selling in Colombia.
The client faced two intersecting problems. First, it had no Colombian registration to rely on. Second, it lacked a formal legal record of the relationship with the distributor – no contract, no licence, no written acknowledgment of who owned the brand. The distributor's position, on paper, appeared defensible.
For a detailed overview of intellectual property protection and enforcement in Colombia, including the procedural routes available to foreign rights holders, our service page sets out the full regulatory picture.
Legal strategy: nullity proceedings and prior use evidence
The core strategic choice was to pursue a nullity action before the Superintendency of Industry and Commerce rather than a commercial negotiation. Negotiation would have validated the distributor's leverage. The nullity route – grounded in bad-faith registration under Colombian intellectual property legislation – offered a path to extinguish the distributor's registration entirely.
Bad-faith registration in Colombia is not simply proven by showing prior use abroad. The proceeding required assembling a layered evidentiary record demonstrating three things: that the distributor knew the mark belonged to the client. That it filed the trademark application to obstruct the client's market access. Additionally, that the mark was well-known or had acquired secondary meaning in Colombia through the client's commercial activity.
The opposition proceedings that ran in parallel – filed against pending classes not yet granted – provided a secondary line of attack. Opposition proceedings under Colombian IP rules allowed the client to contest new filings while the nullity action addressed marks already registered.
The strategy combined both tracks simultaneously. The rationale was straightforward. If the nullity action succeeded, the opposition proceedings would become redundant. If the nullity action faced delays, the opposition track would at minimum prevent the distributor from expanding its registered portfolio further.
Key milestones and complications
The first milestone was securing certified evidence of the client's prior use in Colombia. This required locating sales records, invoices, and marketing materials that pre-dated the distributor's filing. Many of these records had been held by the distributor itself, which declined to cooperate. Alternative sources – customs records, third-party retailers, online archive captures – had to be assembled carefully.
The second complication arose from the distributor's procedural responses. It contested the evidentiary basis at each stage and filed counter-arguments asserting that it had developed the brand's local recognition independently. This extended the administrative timeline significantly.
A further complication involved the Nice classification scope. The distributor had filed across several classes, some of which overlapped with product categories the client had not previously commercialised in Colombia. For those categories, the prior-use argument was weaker. The team had to construct the bad-faith argument differently – relying on the distributor's evident knowledge of the client's broader portfolio and its commercial intent.
The Superintendency of Industry and Commerce issued its resolution on the nullity action after approximately fourteen months. The registered marks covering the client's core product categories were declared null. The opposition proceedings for the remaining classes were subsequently resolved in the client's favour, drawing on the nullity decision as supporting authority.
For clients whose IP exposure intersects with technology or digital product categories, the considerations involved in an AI and technology law practice in Colombia add further complexity to portfolio management and brand protection strategy.
To explore how a similar recovery strategy could apply to your IP situation in Colombia, contact us at info@ferrazwhitmore.com.
Transferable lessons for cross-border IP matters
Lesson 1: Document the commercial relationship from the outset. The absence of a written distribution or licensing agreement was the single largest vulnerability in this matter. Had a contract expressly acknowledged the client's ownership of the mark and prohibited the distributor from filing any IP registration, the entire dispute would have been avoidable. In any cross-border distribution arrangement, IP ownership clauses and registration prohibitions should be treated as non-negotiable.
Lesson 2: File trademark applications early in each target market. Under Colombian intellectual property legislation. and across the majority of Latin American IP systems. a registered mark carries priority over an unregistered one. Even where prior use can be demonstrated. Waiting until a distribution relationship is established before filing a local trademark application creates a window of vulnerability. A proactive IP registration strategy, filed early and maintained across all active markets, closes that window before it can be exploited.
Lesson 3: Parallel procedural tracks are more effective than sequential ones. Running nullity proceedings and opposition proceedings simultaneously. rather than waiting for one to conclude before initiating the other. prevented the distributor from consolidating its position during the period of uncertainty. In bad-faith registration matters, delay almost always benefits the registered party. Acting across multiple procedural channels at once applies pressure, limits the opposing party's options, and reduces the overall timeline to resolution.
A comparable approach to portfolio recovery in a different jurisdiction is examined in our IP portfolio recovery case study for the United States, where the strategic dynamics differ significantly under common law principles.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our team combines Portuguese civil law expertise with English common law tradition to deliver cross-border legal solutions in intellectual property protection, portfolio recovery, and IP enforcement. In Colombia and across Latin American markets, we advise international rights holders on trademark strategy, bad-faith registration challenges. Additionally. Cross-border infringement claims. working with a network of local counsel to manage proceedings before the Superintendency of Industry and Commerce and equivalent authorities. As a law firm in Colombia matters, we draw on deep experience in civil law IP systems to build strategies that work across jurisdictions. Our attorneys have advised on IP disputes involving both administrative and judicial tracks, and the firm participates in international practice groups focused on cross-border intellectual property enforcement. Engaging a lawyer in Colombia with cross-border experience – rather than a purely domestic practitioner – is particularly important where the matter involves foreign priority claims, Nice classification strategy, and multi-track proceedings. To discuss how our approach to IP portfolio recovery could apply to your situation, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.
Published: March 24, 2026 | Author: Marco Reyes, International Counsel, Americas & Iberian Markets