COSTA RICA Law and Practice Contributed by: Maricruz Villanea Villegas, Roberto Arguello, Edna Lopez and Leyla Harper-Dominique, IDEAS IP
Acquired Distinctiveness and Secondary Meaning A sign that is not inherently distinctive may still be registered if it has acquired distinctiveness through use. The applicant must demonstrate to the Registry that the sign is recognised by the relevant public as identifying its goods or services, through evidence of long use, sales figures, advertising investment and market surveys. Famous and Well-Known Marks Well-known marks are protected even without local registration. A mark qualifies as well known if recog- nised in any Paris Convention member state by the relevant sector of the public or in international trade. Protection extends across all goods and services where use by a third party would cause confusion, association or unfair advantage. 2.3 Trade Mark Registration System Registration is not strictly required for some level of protection. Under Article 4 of Law No 7978, a per- son using a mark in good faith for more than three months has a preferential right to registration over a later applicant. In practice, registration is what gives the full package of enforceable rights and is standard for any serious rights-holder. Applications are filed before the Industrial Property Registry. Formal examination takes 15 business days; substantive examination follows, checking absolute and relative grounds for refusal under Articles 7 and 8. If objections arise, the applicant has 30 business days to respond. The Registry then orders three publica- tions in the Official Gazette; any party has two months from first publication to oppose. An uncontested application typically takes 9–15 months. Official fees are USD50 per class; total costs including local repre- sentation typically run to USD500–USD800 per class. Costa Rica allows multi-class applications under a single filing. Each class is treated separately for fee purposes. 2.4 Term, Use and Maintenance Term of Protection Under Article 20, a registered trade mark is protected for ten years, renewable indefinitely for successive ten-year periods. Renewal is filed before the Indus-
trial Property Registry with proof of payment of USD50 per class, within the year before expiry. A six-month grace period applies with a USD25 surcharge; the registration remains in full force during that period. Renewals are not subject to substantive examination or publication. Under Article 40, genuine use means placing goods or services in commerce in quantities normal for the market. Licensee use counts as owner use. The mark must be used in the registered form, though minor differences that do not alter identity are accepted. Exports and services rendered abroad from Costa Rica qualify. Under Article 39, cancellation for non-use may be requested by any interested party after five consecu- tive years of non-use. If use resumes at least three months before the cancellation request, that use blocks cancellation. Non-use affects only the goods or services not used; the result is a partial cancella- tion. Cancellation will not be ordered if non-use is due to justified reasons beyond the owner’s control, such as import restrictions. 2.5 Trade Mark Rights and Limitations Exclusive Rights Under Article 25 of Law No 7978, the owner of a regis- tered mark has the exclusive right to prevent third par- ties from using, without consent, identical or similar signs for identical or similar goods or services where there is a likelihood of confusion. When the sign and the goods or services are identical, confusion is pre- sumed. The rights cover a broad range of commercial acts, including: • applying or placing the mark or a similar sign on products, packaging or wrapping; • removing or altering the mark after it has been applied; • manufacturing labels, packaging or similar materi- als that reproduce the mark, or dealing in such materials; • refilling or reusing commercially any containers bearing the mark;
64 CHAMBERS.COM
Powered by FlippingBook