眾律國際法律事務所

Introduction:

Language: Spanish

Capital: San Jose

Area: 51,100 km2

Population: 4,586,353 (2011)

Currency: Costa Rican colon (CRC)

Religions: Roman Catholicism

Geographical situation: is a country in Central America, bordered by Nicaragua to the north, Panama to the southeast, the Pacific Ocean to the west, the Caribbean Sea to the east, and Ecuador to the south of Cocos Island.

International treaty membership:

Trademark Law Treaty (October 17, 2008)

Convention Establishing the World Intellectual Property Organization (June 10, 1981)

Legislation:        

Law No. 8632 of March 28, 2008, on Amendments of various Articles of Law No. 7978 on Trademarks and other Distinctive Signs,

Government Institutions:

Register of Industrial Property National Register Ministry of Justice and Peace

Type of trademark:

Trademarks refer in general to any sign or combination of signs capable of distinguishing goods or services, especially words or groups of words – including the names of persons–, letters, numbers, figurative elements, figures, monograms, portraits, labels, coats of arms, stamps, stickers, logos, lines or borders, combinations and arrangements of colors as well as sounds. Similarly, they may consist of the form, presentation or packaging of products, their wrapping or cover or the channels or outlets for distributing the corresponding goods or services. 

Well known, certification and collective trademark can also be registered.

Ground for refusal :

Relative ground for refusal:

No sign may be registered as a trademark where this affects any rights of third parties, in the following cases, inter alia:

- where the sign is identical or similar to a trademark, geographical indication or appellation of origin, which has been registered to or applied for by a third party at an earlier date, and distinguishes the same goods or services and others related thereto, which may cause confusion among the consumer public;

- where use of the sign is likely to cause confusion, because it is identical or similar to a trademark, geographical indication or appellation of origin, which has been registered to or applied for by a third party at an earlier date, and distinguishes the same goods or services or goods and services which are different but are likely to be associated with those distinguished by the earlier trademark, geographical indication or appellation of origin;

-where use of the sign is likely to create confusion, because it is identical or similar to a trademark, geographical indication or appellation of origin used, from an earlier date, by a third party with a better right to obtain registration, according to Article 17 of this Law, for the same goods or services or for goods or services which  are different but are likely to be associated with those which distinguish the respective trademark, geographical indication or appellation of origin in use;

Absolute ground for refusal:

-where the sign constitutes a reproduction or imitation, in full or in part, of a protected certification trademark from an earlier date. 

- no distinctiveness

- contrary to public order or morality

-It is identical or similar, in such a way as to cause confusion, to a trademark whose registration has expired or was not renewed during the six ­month priority period following its expiration, or was cancelled at the request of its owner and was used in trade for the same goods or services or others which, owing to their nature, may be associated with them, unless one to three years have passed after expiration or cancellation; in the case of a collective trademark, from the expiry date to cancellation. This prohibition shall not apply where the person filing for registration is the same as the owner of the expired or cancelled registration or his successor in title;

Application content:

Applications for trademark registration shall be filed with the Industrial Property Registry and shall contain the following:

- the applicant's name and address;

- the applicant's place of incorporation and residence, in the case of a legal entity;

- the name of the legal representative, as applicable;

- the name and address of the agent in the country, where the applicant has neither a domicile nor a real and effective commercial establishment in the country;

- the mark applied for, in the case of a word mark, without graphics, form or special color;

- a reproduction of the mark in the number of copies determined by the Regulations under this Law, in the case of word marks with special graphics, form or color, or figurative, mixed or three­dimensional marks with or without color;

- a translation of the mark, where it is composed of any word component with meaning in a language other than Spanish;

- a list of the names of the goods or services for which the mark is used or will be used, grouped together by class according to the Nice International Classification of Goods and Services, with an indication of the number of class;

-proof of payment of the basic fee set.

Application process:

The industry property office will lead first an examination of form where they check if all the documents required where provided, then it will proceed to substantive examination to see whether the application is subject to ground for refusal.

Once the examination is done the Industrial Property Registry shall order that applications be announced via the publication, on three occasions and at the interested party’s expense, of a notice in the Official Gazette, within a period of 15 days following notification.

Any interested party may file an opposition to a trademark registration within a period of two months, beginning from the first publication of the notice announcing the application. The opposition shall be filed with the reasons de facto and de jure, and shall be accompanied by the relevant proof which is available. In the event that the proof is not submitted with the opposition, it shall be submitted within a period of 30 calendar days following the filing date of the opposition. The opposition shall be notified to the applicant, who shall have two months to answer, beginning from the date of notification. Once this period expires, the Industrial Property Registry shall decide on the application, even if there has been no reply to the opposition

Refusal:

In the event of non­compliance with any of the requirements the Registry shall notify the applicant so that he may remedy the error or omission within a period of 15 working days, beginning from the corresponding notification, failing which the application shall be deemed abandoned.  

The registration of the mark might be refused if an opposition has been filed against that mark.

Rights of exploitation and related delay:

Registration for a mark shall be valid for ten years and can be renewed each time for ten years. The renewal shall be done within the last year of protection plus a six months grace period after the expiry of the mark. Renewals may not contain any change to the mark or broadening of the list of goods or services covered by the registration. Renewal entries shall indicate any reduction or limitation placed on the list of goods or services distinguished by the mark.

Owners of a factory mark or trademark that has already been registered shall enjoy an exclusive right to prevent third parties from using identical or similar  signs in trade without their consent, including geographical indications and appellations of origin, for goods or services which are identical or similar to those registered for the mark, where use gives rise to the likelihood of confusion. In the case of use of an identical sign, including geographical indications and appellations of origin, for identical goods or services, it shall be assumed that there is a likelihood of confusion. Consequently, trademark registration shall confer on owners or their rightful claimants the right to take action against third parties who use the mark without their consent.

Trademark registration shall not confer the right to prevent a third party from using the following in respect of goods or services in trade:

- his name or address or that of his business establishments;

- indications or information on the characteristics of his goods or services, inter  alia those referring to quantity, quality, use, geographical origin or price;

- indications or information in respect of the availability, use, application or suitability of his goods or services, particularly in relation to spare parts or accessories

Transfer and conditions:

Rights in trademarks which are registered or applied for may be assigned inter vivos or transferred by succession. Assignments shall be evidenced in writing and shall be recorded to be binding on third parties. Recording shall be subject to payment of the fee.

Certification:

The Industrial Property Registry shall send owners a trademark registration certificate containing the information included in the corresponding registration and the information required by regulatory provisions.

Withdrawal and cancellation:

Applicants may withdraw their application at any time during processing. If they do so, they shall not be entitled to the reimbursement of the fees paid.

Provided that the principles of due process are respected, at the request of any party with a legitimate interest or ex officio, the Industrial Property Registry shall invalidate the registration of a mark if it subject to ground for refusal.

Where the grounds for invalidation have only applied to some of the goods or services for which the mark is registered, invalidation shall apply only to those goods or services, which shall be deleted from the respective list in the registration of the mark.

Cancellation because a mark has become widespread

Cancellation of trademark registrations due to lack of use ( for consecutive five years).

Owners can also cancel the registration against payment of fees.

Where a third party right has been entered in respect of the trademark, cancellation shall only be recorded following submission of a written statement by the third party signed before a notary and attesting that he is aware of cancellation.

Customs protection:

Even if customs can act ex-officio, it is better to apply for custom enforcement. In order to apply to protection, the owner of the mark shall provide:

- Proof of the right to request the injunction

- File a bond or guarantee

- Information concerning the infringing goods

- Evidence of the infringement

The customs office will seize the goods (postpone clearance of imported goods) at the request of the IPR owner or ex officio for ten (10) days, during which the owner must file a civil (or criminal) suit, otherwise the customs office will lift the seizure.

If the goods are declared as infringement, they shall be destroyed.


Sources:

Wipo.int:

Law No. 8632 of March 28, 2008, on Amendments of various Articles of Law No. 7978 on Trademarks and other Distinctive Signs,

INTELLECTUAL PROPERTY RIGHTS’ AND TRADE ENFORCEMENT PROCEDURES IN COSTA RICA (doc)

http://www.latinamerica-ipr-helpdesk.eu/sites/default/files/factsheets/en_cfs_costa_rica_0.pdf

Vincent Lagier