COSTA RICA Law and Practice Contributed by: Maricruz Villanea Villegas, Roberto Arguello, Edna Lopez and Leyla Harper-Dominique, IDEAS IP
• using an identical or similar sign in a way that causes confusion or a risk of association with the owner; and • using an identical or similar sign in a way that causes the owner unfair economic harm, includ- ing by diluting the mark’s distinctive character, reducing its commercial value or free-riding on its reputation. The Law also treats as acts of use the importing, exporting, storing or transporting of goods bearing the sign, and the use of the sign in advertising, com- mercial documents or communications. Beyond the standard likelihood of confusion test, owners of well-known marks enjoy broader protec- tion under Articles 44 and 45. A well-known mark can be enforced against uses that would cause confusion, suggest a connection with the owner or take unfair advantage of the mark’s reputation, even across dif- ferent categories of goods or services – and regard- less of whether the mark is registered in Costa Rica. Limitations and Defences Article 26 sets out the cases where the owner cannot prevent third-party use. The main ones follow. • Own-name defence: A person may use their own name or address, or that of their business, even if it coincides with a registered mark, as long as the use is in good faith, does not constitute an act of unfair competition and does not cause confu- sion about the commercial origin of the goods or services. • Descriptive use: Third parties may use the mark or similar signs to provide factual information about the characteristics of their own products or ser- vices, such as quality, quantity, intended purpose, geographic origin or price, and to indicate compat- ibility or intended application, such as for spare parts or accessories. Again, good faith and no risk of confusion as to origin are required. • Exhaustion of rights: Under Article 27, the owner cannot prevent the resale or further commerciali- sation of products that have been legitimately put into trade, in Costa Rica or abroad, by the owner or with the owner’s consent. This is an international exhaustion regime. The defence does not apply if
the products or their immediate packaging have been altered, modified or damaged, or if the further circulation would otherwise cause harm to the owner. • Unprotected elements in complex marks: Article 28 provides that when a mark consists of a label or a combination of elements, the protection does not extend to elements that are in common use or necessary in trade. These elements remain avail- able to third parties. 2.6 Trade Mark Enforcement and Remedies Trade Mark Infringement Infringement under Law No 7978 is any unauthor- ised commercial use of an identical or similar sign for identical or similar goods or services where there is a likelihood of confusion. When sign and goods are both identical, confusion is presumed. Infringing acts under Article 25 include applying the mark to products or packaging, altering a mark on goods, manufactur- ing or dealing in labelling bearing the mark, refilling branded containers, using the mark in advertising and importing, exporting, storing or transporting infringing goods. Dilution Dilution is addressed through Article 38, which allows the Registry to cancel a registration when the owner has caused or tolerated the mark becoming generic. Two conditions apply: no other adequate name exists for the product, and the mark is in widespread use as the common name. For well-known marks, Articles 44 and 45 provide broader protection against uses that suggest a connection, take unfair advantage of reputation or damage the mark’s value regardless of the goods involved. Passing Off There is no standalone passing off cause of action. Protection comes through the unfair competition pro- visions of Law No 8039 and Law No 7472, which pro- hibit conduct misleading as to origin or characteris- tics, and the reproduction of marks to take advantage of another’s reputation. These actions may be brought before the Comisión Nacional del Consumidor or in court.
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