COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
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. 6.3 Registration or Recording of an Assignment or Licence Claims to request the annulment of a registered trade mark under the Costa Rican Trademark and Other Dis - tinctive Signs Law must be filed within four years of its registration. Civil trade mark lawsuits for infringement between commercial entities or companies should be filed within four years of the date that the infringement ceases. If the infringement involves individual per - sons, the statute of limitations is up to ten years. Some infringement actions may have longer statutes of limitations. If the infringement has ongoing effects, the time to file a lawsuit will remain open indefinitely. This applies to unfair competition cases in which the offender remains active in commerce, infringing the trade mark rights of the other party. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Claims to request the annulment of a registered trade mark under the Costa Rican Trademark and Other Dis - tinctive Signs Law must be filed within four years of its registration. Civil trade mark lawsuits for infringement between commercial entities or companies should be filed within four years of the date that the infringement ceases. If the infringement involves individual per - sons, the statute of limitations is up to ten years. Some infringement actions may have longer statutes of limitations. If the infringement has ongoing effects, the time to file a lawsuit will remain open indefinitely. This applies to unfair competition cases in which the
offender remains active in commerce, infringing the trade mark rights of the other party. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Infringement of any intellectual property rights estab - lished in national legislation or international conven - tions in force can be pursued. The owner of a registered trade mark can also pursue civil actions for civil liability for damages and losses caused by the infringement, as well as unfair competi - tion claims, which occur when the offender’s infringe - ment produces confusion with the products or with the activity of another person or company, by using, imitating or reproducing intellectual property rights from the other party. These claims can potentially include dilution and cybersquatting, although those are not expressly contemplated under Costa Rican law. Lack of originality may be the basis for an opposi - tion to a copyright infringement claim. Who bears the burden of proof of originality, or lack of originality, in these cases will be up to the plaintiff. Nonetheless, if the owner of the trade mark can dem - onstrate a detrimental effect on its rights, it may be possible to include dilution or cybersquatting claims. Furthermore, the affected person can also file criminal actions when the infringement constitutes a felony. In civil infringement actions, it is possible to file claims for any act that may have a detrimental effect on a trade mark owner’s rights. These claims may include dilution and cybersquatting, although they are not expressly contemplated under Costa Rican law. In particular, the trade mark owner may take action against the use of a sign identical with or similar to the trade mark for goods or services which are not similar to those for which the trade mark enjoys pro - tection if the trade mark has a specific reputation in Costa Rica or a well-known global brand and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.
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