COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
According to the Costa Rican Trademark and Other Distinctive Signs Law, at the request of any person with a legitimate interest, the Trademark Office may cancel the registration of a trade mark or limit its scope when the owner has caused or allowed it to become the generic name of one or more of the goods or services for which it is registered. Whoever represents or communicates protected liter - ary or artistic works to the public, directly or indirectly, whether by wire or wireless means, including making their works available to the public, in such a way that members of the public may access these works from a place and at a time of their own choosing, without the authorisation of the author, right holder or repre - sentative, will be liable to criminal sanctions. Costa Rica is also a contracting party to the WCT, so Article 12 of the Copyright and Related Rights Law applies. 7.3 Factors in Determining Infringement According to the Law on Procedures for Enforce - ment of Intellectual Property Rights, several factors are considered in determining whether the use of a sign constitutes trade mark infringement. In particular, the decree of similarity between signs (grammatical, graphical, visual, phonetic), common target markets or distribution channels, and intentionality are usually analysed in these types of claims. Any element that may lead to confusion among con - sumers will also be a factor during the lawsuit, such as the intensity and duration of advertising and publicity schemes and the degree of the trade mark’s recogni - tion. After conducting an overall assessment of the similarity of the signs, the goods and services and the distinctiveness of the trade mark, the judge must then establish that these elements lead to a likelihood of confusion or association with the existing trade mark. 7.4 Prerequisites and Restrictions to Filing a Lawsuit No formal prerequisites or restrictions exist for filing a lawsuit. However, it is crucial to possess a regis - tered trade mark and sufficient evidence demonstrat - ing both the infringement and the resulting damages from illegal or unfair competition.
Furthermore, before commencing a judicial process, the owner of a trade mark may, at its discretion, send a warning letter to the alleged infringer and demand a declaration of agreement to cease and desist from the respective trade mark infringement, threatening fur - ther legal action in the event of non-compliance. This process is not required but is frequently employed to try to resolve the conflict without litigation. 7.5 Lawsuit Procedure Civil lawsuits for infringement will be heard before the Judicial Civil Court in an ordinary civil judicial process. Typically, the process involves: • filing the lawsuit; • the defendant’s response; • one preliminary hearing to review the procedural formalities claims; • evidence that will be admitted by the Court; and • one additional hearing to obtain testimony from witnesses and allow closing arguments. The Court will then issue its first-instance ruling. This ruling can be appealed before the First Chamber of the Supreme Court. Parties filing a lawsuit must retain legal representa - tion and typically must execute legally authenticated powers of attorney. Additionally, notarised certifica - tions of documents or affidavits may be required for evidentiary purposes. For foreign trade mark owners to file infringement claims in Costa Rica, the trade mark must be regis - tered, or prior current use must be proven. Copyright arises from the idea, and registrations are considered cross-border by the Costa Rican authorities, so a local registration is not necessary if a foreign one exists. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants The infringer cannot normally initiate declaratory judgment proceedings. If a preliminary injunction is requested by the plaintiff, a bond must be posted by the plaintiff to secure the damages that may be caused by the defendant and the bond will be lost in the defendant’s favour if the plaintiff fails to pursue the claim to a favourable conclusion. The defendant may
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