The registration was granted despite the opposition to the proceeding by the Antioquian company Educanadá S.A.S
The Government of Canada, officially The Government of Canada -Department of Foreign Affairs, Trade and Development requested before the Superintendence of Industry and Commerce of Colombia the registration of the registered trademark EduCanadá to distinguish services included in classes 35 and 41 of the International Classification of Nice, which include promotion of Canadian educational institutions and development of links between educational institutions in Canada and educational institutions in other countries, respectively.
The registration was granted despite having faced an opposition to the proceeding by the Antioquia company Educanadá S.A.S, dedicated to the provision of educational services in foreign languages.
According to what was published in the Industrial Property Gazette No. 826, Educanadá S.A.S. presented opposition based on literal B of Article 136 of Decision 486 of 2000 of the Commission of the Andean Community. The representatives of the Educanadá company gave evidence of the status of owner of the name to register, stating:
"The company Educanadá S.A.S. It is the owner of the Educanadá trade name that corresponds to the NIT 900802094-9 and the commercial registration number 21-572104-12 constituted on December 18, 2014 in the Chamber of Commerce of Medellín, capital of the department of Antioquia ".
To this they added that "the protection granted to the commercial name is subject to its actual and effective use in relation to the establishment or economic activity that distinguishes it, since it is the use that allows it to be consolidated as such and maintain its right to exclusive ", this in reference to the factual use of the name in commercial activity of the brand.
Additionally added, "it is clear that the fact that a trade name is registered does not free it from the use requirement to maintain its validity". In this sense, the documentation that accounts for the use of the name EduCanadá for educational services in Medellín was presented. These tests were sent to the office of the Directorate of Distinctive Signs, attached to the Superintendence of Industry and Commerce.
The Canadian Government, through its legal representative in Colombia, stated: "in no way do these documents show a real and effective use of commercial name, without having prior and direct evidence on the identification by the consumer of the alleged commercial name".
Additionally, the registration of EduCanadá was reported to the trademark authorities of that country in 2007.
In order to decide on the request for trademark registration of the reference, the Directorate proceeded to carry out an examination of registrability taking into account the arguments raised by the parties, finding that the sign object of the request is not included in the grounds of non-registrability established in Article 136 letter B of Decision 486.