Trademark and Other Distinctive Signs

In Costa Rica we have a special law called the Law of Trademarks and other Distinctive Signs of Costa Rica, Law No.7978, which regulates everything related to this matter.

All trademark proceedings are handled before the Intellectual Property Registry, part of the Public Registry of Costa Rica.

The hierarchical superior of the Registry is the Administrative Registry Court, whose decisions can only be challenged in court.

The services we offer:

• Search and registration background studies:

Our first recommendation is to carry out a background study before the Intellectual Property Registry to determine the viability of the term of interest. Positive results will facilitate the achievement of trademark registration.

• Trademark Registration Applications:

Trademark applications can be filed in the form of individual or multiclass applications. An application must be filed for each International Class to be protected, in accordance with the Nice Classification, International Classification of Goods and Services for the Registration of Trademarks. Trademarks are registered for a period of 10 years, which will count from the date of registration. It is also possible to claim a Paris Convention Priority in Costa Rica.

• Renewals:

Trademark registrations can be renewed indefinitely for successive periods of 10 years each. Renewal applications can be filed within the year prior to the expiration date of the trademark. Similarly, Costa Rican law grants a six-month grace period (from the expiration date) to submit a renewal application. However, the renewal period will always start on the previous expiration date.   

• Assignmentss:

Trademark rights or a trademark application may be assigned. The assignment can be made in writing and registered in the Intellectual Property Registry so that it shall have effect before third parties.

• Name changes:

The owner of a trademark, who has changed or modified its corporate name or trade name, must file to the Intellectual Property Registry to register the change for the respective trademark registrations.

• Address Change:

The owner of a trademark that has changed its address must file to the Intellectual Property Registry to register the change for the respective trademark registrations.

• Mergers:

The owner of a trademark that has merged with another company must file to the Intellectual Property Registry for the registration of the merger and the registrations of the respective trademarks.

• License Agreements:

The owner of a right in a trademark registration or application may license another party to use that trademark.  It is not mandatory to register the license before the Intellectual Property Registry, but only through registration will its effects be extended to third parties.

• Opposition:

An opposition against a trademark application by a third party may be filed within a period of two months after its first publication in the Official Gazette.  

The grounds for the opposition can be either:

(i) a registered trademark in Costa Rica; or

(ii) a trademark that has not been registered in Costa Rica, alleging notoriety of the foreign trademark.

• Appeals:

If an opposition has been denied, the decision of the Intellectual Property Registry may be appealed to the Administrative Registry Court. The court is the highest administrative entity it ends non-judicial administrative proceedings.

• Cancellation and nullity actions:

At the request of any person with a legitimate interest, the Intellectual Property Registry may declare a trademark registration invalid due to one of the following reasons:

(i) Lack of distinctive qualities or if it harms the rights of third parties. In this case, the declaration of nullity will have retroactive effect only until the date of the act, without prejudice to rights acquired in good faith.

(ii) Brand generalization. It may involve the cancellation of the trademark registration or a limitation on the scope of the protected goods or services.

A trademark is understood to have become a generic name when, both in commerce and for the public, it has lost its distinctive character as an indicator of the corporate origin of the product or service to which it is applied.

(iii) Lack of use. This occurs when a trademark has not been used in Costa Rica during the five years prior to the date of filing of the cancellation action. In other words, cancellation cannot be requested unless five years have passed since the date of registration.  It may involve the cancellation of a trademark registration or a limitation on the scope of protected goods or services.

Cancellation of a right for non-use may also be requested as a defense against an objection from the Intellectual Property Registry, an opposition to registration by a third party, an application to declare the nullity of a trademark registration, or an action due to the violation of a registered trademark.

• Voluntary cancellations:

At any time, the registered owner may request the cancellation of a trademark registration or a limitation on the range of protected goods or services.

• Registration of slogans:

A slogan is any phrase, combination of words, device, engraving or any similar means, as long as it is original, characteristic and is used to attract the attention of consumers or users in relation to a certain product, service, company, facility or commercial establishment. 

The protection term of slogans is indefinite, but such protection is linked to the existence of the trademark used in conjunction with the slogan.   The expiration/extinction of the trademark registration implies the extinction of the registration of the slogan.

• Trade Name Registration:

A trade name is a word, or a figurative word and sign that identifies and distinguishes a particular company or commercial establishment.

The term for protection of trade names is indefinite, but such protection is linked to the existence of the company or commercial establishment protected by the name. The permanent closure of the establishment or the liquidation of the owner implies the extinction of the trade name.

• Oppositions against corporate names:

The grounds for an opposition against a corporate name can be either:

(i) a registered trademark in Costa Rica; or

(ii) a trademark that has not been registered in Costa Rica, alleging notoriety of the foreign trademark.

VIOLATION OF INTELLECTUAL PROPERTY RIGHTS

In Costa Rica , the Law on Procedures for the Enforcement of Intellectual Property Rights, Law No. 8039 allows us to carry out various actions against the sale, storage and display of fraudulent products. These actions are as follows:

(i) Criminal accusation before the prosecutor’s office: This action involves filing a properly documented charge against the person or company that is infringing trademark rights, specifically in trademark counterfeiting and in the sale, storage, and distribution of fraudulent products.

(ii) Precautionary border measures, before or after the product enters Costa Rica: This action takes place before the Director General of Customs and the Tax Police, in order to confiscate the merchandise at any of the eight customs posts in our country.

(iii) Precautionary civil measures: If the merchandise is already in the Costa Rican market and there is no relationship with non-payment of taxes, civil actions must be filed to request the confiscation of the merchandise.

(iv) Civil actions due to unfair competition and trademark infringement: This type of action can be filed before the civil courts of Costa Rica based on unfair competition.

ACTIONS DUE TO UNFAIR COMPETITION

Civil actions due to unfair competition and trademark infringement: This type of action can be filed in court before the Civil Courts of Costa Rica. According to the aforementioned Enforcement Law, unfair competition is “any conduct that reproduces, without the authorization of its owner, trademarks and other protected elements for the benefit of its legitimate owner, to take advantage, on a commercial scale, of the results of the efforts and prestige of others” and “any use of trademarks that cannot be registered due to their similarities with registered trademarks”.