COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
4.11 The Madrid System Costa Rica is not part of the Madrid System for inter - national registrations. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation An opposition to a trade mark application needs to be filed within two months of the first publication date of the trade mark in the National Gazette. No extensions can be requested. Alternative dispute resolution (ADR) is uncommon in IP matters, and even less so in trade mark cases. However, if this happens, the Trademark Office would normally suspend the procedure until an agreement is reached, provided they agree. Under Costa Rican legislation, a revocation request can be filed within four years to seek annulment of a trade mark, while a non-use revocation request can be filed after five consecutive years of non-use. These periods are calculated from the trade mark’s registra - tion date. 5.2 Legal Grounds for Filing an Opposition or Cancellation The legal grounds of an opposition to a trade mark application are normally similar to filing an opposition to registered trade marks, although any prohibition to register is a valid basis to oppose. Lack of distinctiveness, dilution of a trade mark or confusing trade marks are also legal grounds for an opposition. The legal grounds to file a cancellation proceeding are: • prior rights of third parties; • any of the legal grounds by which the Trademark Office can reject a trade mark (see 4.10 Refusal of Registration ); and • any violation of the essential formalities of the reg - istration process.
5.3 Ability to File an Opposition or Revocation/Cancellation
Any interested party may file an opposition against the registration of a trade mark. This procedure does not require an attorney, although it is normally filed by the opponent’s legal representatives. The opponent can file an opposition without hold - ing a trade mark, although under Costa Rican law, the opponent must file an application to support the opposition. The average office and attorneys’ fees are USD1,000. A revocation or cancellation proceeding can be ini - tiated by the owner of an existing trade mark, any interested third party, or the Trademark Office itself. If a proceeding is filed by a third party, they must dem - onstrate a legitimate legal or commercial interest in the matter or the action may be rejected. The third party must clearly state and explain their legal or com - mercial interest in the cancellation proceeding. 5.4 Opposition or Revocation/Cancellation Procedure Once an opposition is filed, the applicant will have a two-month period to file its arguments. Once the Trademark Office has both parties’ arguments, the opposition will be resolved. The applicant is not obliged to respond to the opposition, although it is highly recommended. A revocation or cancellation action is typically initiated before the Trademark and Copyright Offices. However, if necessary, legal actions can also be filed before the Costa Rican courts. 5.5 Legal Remedies Against the Decision of the Trade Mark Office It is possible to file the pertinent appeals against a decision to accept an opposition. These appeals are resolved in the first instance by the Trademark Office and in the second instance by the Administrative Board of Appeal of the Registry. In both cases, a hearing will be held and the applicant can present their arguments to try to reverse a deci - sion to refuse the application.
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