COSTA RICA Law and Practice Contributed by: Maricruz Villanea Villegas, Roberto Arguello, Edna Lopez and Leyla Harper-Dominique, IDEAS IP
Interim and Ex Parte Injunctions Interim measures are available under Law No 8039, including suspension of infringing activity, seizure of goods and preservation of evidence. Ex parte meas- ures are available where urgency or prior notice would defeat the purpose. The applicant must post a bond to cover potential damages if the measure is later found unjustified. Remedies for Infringement Under Law No 8039, the following remedies are avail- able: • injunctions – the court can order the infringer to cease the infringing activity on a permanent basis; • damages – the rights-holder can claim compen- sation for actual losses suffered as a result of the infringement, as well as lost profits caused by the infringing activity; • destruction or disposal – infringing goods and materials used to produce them can be ordered destroyed or removed from commerce; and • publication of the judgment – the court can order publication of the judgment at the infringer’s expense. Attorneys’ Fees and Costs Attorneys’ fees and costs are recoverable through the standard condena en costas mechanism under Costa Rican civil procedure. There is no special regulation for patent cases in this regard – the general civil pro- cedure rules apply. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Laws Governing Trade Mark Protection Trade mark protection in Costa Rica is governed pri- marily by the Trade Marks and Other Distinctive Signs Law (Law No 7978 of 2000) and its regulations. Law No 8039 (Law on Procedures for the Enforcement of Intellectual Property Rights) governs civil enforce- ment. Costa Rica is bound by the TRIPS Agreement, the Paris Convention and CAFTA-DR.
Types of Signs That Can Be Protected Law No 7978 allows registration of a broad range of signs. The Registry of Industrial Property accepts word marks, figurative marks, combined marks, slo- gans, combinations of colours, three-dimensional shapes, sounds and scents. Single colours alone are not registrable and are expressly excluded under Article 7 of Law No 7978. However, combinations of colours are accepted pro- vided the applicant demonstrates distinctiveness. For three-dimensional marks, the Registry requires the applicant to submit five different views of the mark to allow a proper assessment of the shape being claimed. Sound and scent marks are also accepted under Cos- ta Rican law, making Costa Rica one of the few juris- dictions in the region that formally recognises these non-traditional mark types. Unregistered and Well-Known Trade Marks Costa Rica recognises protection beyond registered marks in two ways. First, prior use in Costa Rica is a recognised basis to oppose or challenge a registration under Article 17, even without a prior registered mark. Second, well-known marks are protected regardless of local registration under Article 8 (e): a sign that reproduces, imitates or translates a well-known mark cannot be registered if its use would cause confusion, association or unfair advantage – protection extends across all goods and services. 2.2 Requirements for Trade Mark Protection Essential Elements of Trade Mark Protection The fundamental requirement for registration under Law No 7978 is distinctiveness – the sign must be capable of distinguishing goods or services. Costa Rica follows a first-to-file system; prior use is not required to file but creates a preferential right. The sign must not fall within the absolute or relative grounds for refusal under Articles 7 and 8, which exclude generic, descriptive, deceptive or functional signs. Use is not a condition for maintaining registration, but a mark becomes vulnerable to cancellation if unused for five consecutive years; cancellation must be requested by a third party with a legitimate interest.
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