How to claim colours within a trademark application is an area that has undergone many changes in Colombian prosecution practice.

Nevertheless, in a recent resolution (Resolution 59671 of 25 September 2020), the Trademark and Patent Office finally set out clear regulations on how to proceed.

A claim of colours defines a trademark's scope of protection. If the trademark is registered in black and white, there will be no protection over the colours, but the use of the trademark in any colour or colour combination will constitute suitable proof of use in case of a cancellation action.

Therefore, whether colours are or are not claimed within a trademark application and the manner in which they are claimed is important in terms of the use and scope of protection of the trademark.

With its recent resolution, the Trademark and Patent Office established the following simple rules to be followed when filing an application:

  • Applicants must make an initial declaration on the database form (by ticking the corresponding box) to indicate whether there is or is not a claim of colours within the application.
  • If the box indicating that there is a claim of colours is ticked, the applicant must indicate the name of the colours to be claimed. Applicants may not use any adjectives to describe the colours, nor give a subjective qualification of the colour (eg, navy blue or scarlet red).
  • If the applicant wants to further specify the colours, it must use an international identification code (eg, Pantone, Focoltone or RGB).
  • If colours are claimed in the application, the label filed must be in colour.
  • It will no longer be acceptable to use references, signs or indications that signal the claimed colours.
  • Finally, if the applicant does not want to claim colours within the trademark application, it must indicate this in the trademark filing form and present the label in black and white.

In conclusion, where an applicant wants to claim only basic colours within a label, it must indicate that it wishes to make a claim of colours in the application form and provide the general name of the colours which appear on the label. If the applicant's intention is to acquire protection over specific colours within the label, beyond the generic colour name, it must use an international identification colour code. If no colours are to be claimed, the label to be filed as part of the application must be in black and white.

This regulation change took effect on 5 April 2021.