COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
pursue a counterclaim against the validity of the plain - tiff’s registration as soon as the defendant receives a formal notice of the plaintiff’s complaint. 7.7 Small Claims ADR mechanisms are not compulsory. ADR is not very common in intellectual property matters in Costa Rica, and even less so in trade mark and copyright cases. 7.8 Effect of Trade Mark and Copyright Office Decisions Trademark Office decisions are not binding on a judge. However, they can provide interpretation and techni - cal criteria for a court to use in its rulings. They can also be included as evidence in legal proceedings. 7.9 Counterfeiting and Bootlegging There is no definitive list of what constitutes a coun - terfeit trade mark or copyright infringement, and the constitution will depend on the evidence and argu - ments to prove that the counterfeit trade mark or work is not original. There are no special procedures addressing counter - feit trade marks. These cases will be handled by the administrative, civil or criminal courts, depending on the nature of the infraction and the specific claims of the affected party. Criminal liability may also fall on importers, distributors, sellers, or the supply chain thereof of products bearing the forged trade mark. In addition, it is possible to request that the Customs Department include them on their databases so they can notify trade mark owners of any imports that may infringe registered marks. Trade mark owners may also provide customs with information to help them detect counterfeit products. Criminal liability is possible, but it will proceed in accordance with the applicable criminal law and pro - cedures. Regarding illegal or non-official reproductions, under the Costa Rican Copyright and Related Rights Law, there is no special procedure; however, the Law on Procedures for Enforcement of Intellectual Property Rights applies. There is criminal liability, but this would
proceed according to the applicable criminal law and proceedings.
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special provisions for trade mark pro - ceedings. The proceedings will follow the standard procedure rules for civil, administrative or criminal cases. The Costa Rican authorities specialised in intellectual property are the Trademark Office and the Administrative Board of Appeal. The Costa Rican legal system does not include a jury. The Trademark Office is composed of examining attorneys; any formal observations or office actions and refusals are issued by individual examiners. The Administrative Board of Appeal is composed of a court of five judges and one processing judge. The parties have no influence over who makes the decisions. 8.2 Effect of Registration Registrations are presumptively valid and provide exclusivity over all products or services covered by the registration certificate. Therefore, the registered owner is considered the actual owner of the trade mark. Furthermore, Article 25 of the Trademark and Other Distinctive Signs Law states that the owner of the trade mark will have the exclusive right to prevent third parties from using similar or identical signs in commerce without its prior consent when there is a likelihood of confusion. If the sign used by the third party is identical or is for identical goods or services, there will be a presumption of confusion. No established threshold exists regarding the scope of protection. The determination depends on whether the goods or services are identical, related, or suffi - ciently similar to cause confusion. 8.3 Costs of Litigating Infringement Actions The typical costs are approximately 10% of the esti - mated claim amount, with minimum fees ranging from
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