COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
Finally, resolutions of the Trademark Office or the Administrative Board of Appeal can be challenged through an ordinary lawsuit before the Judicial Admin - istrative Conflicts Court. 5.6 Amendment in Revocation/Cancellation Proceedings Although uncommon, the trade mark owner may request an amendment during revocation or cancella - tion proceedings that are still pending. However, there is no guarantee that the amendment will be accepted. 5.7 Combining Revocation/Cancellation and Infringement Cancellation and infringement proceedings will gener - ally run separately. 5.8 Measures to Address Fraud There are no specific procedures for revoking or can - celling trade marks filed or registered fraudulently. Therefore, the affected party may allege fraud in any proceeding in which the validity of the trade mark is in question. If the trade mark has not been regis - tered, an opposition can be filed. If the trade mark has already been registered, the affected party may initi - ate standard cancellation or invalidation proceedings. Additionally, the party may pursue remedies through administrative conflict resolution or criminal prosecu - tion channels.
In the absence of any stipulation to the contrary, in a licence agreement, the following rules will be appli - cable: • the licensee will have the right to use the trade mark for the entire term of the registration, includ - ing renewals, throughout Costa Rica, for all goods or services for which the trade mark is registered; • the licensee cannot assign the licence or grant sub-licences; and • where the licence has been granted as exclusive, the licensor may not grant other licences in respect of the same trade mark or the same goods or services nor may they use the trade mark in Costa Rica in relation to those goods or services. Licence archival rights are not contemplated by law. However, if the parties contractually agree to it, it would be allowed. 6.2 Licensing Requirements or Restrictions Costa Rican law does not apply specific restrictions or requirements for licences, so general contractual law applies. Licences do not need to be registered with the Trademark Office to be effective. According to Costa Rican law, exclusive and non- exclusive licences are accepted. Licence agreements In the absence of any stipulation to the contrary, in a licence agreement, the following rules will be appli - cable: • the licensee will have the right to use the trade mark for the entire term of the registration, includ - ing renewals, throughout Costa Rica, for all goods or services for which the trade mark is registered; • the licensee cannot assign the licence or grant sub-licences; and • where the licence has been granted as exclusive, the licensor may not grant other licences in respect of the same trade mark or the same goods or must contain the: • type of licence; • territory; and • duration.
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
Costa Rican law does not apply specific restrictions or requirements for licences, so general contractual law applies. Licences do not need to be registered with the Trademark Office to be effective. According to Costa Rican law, exclusive and non- exclusive licences are accepted. Licence agreements
must contain the: • type of licence; • territory; and • duration.
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