COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
The judge has discretion to order remedies, such as forcing the infringer to forfeit the infringing product. All remedies will comply with the proportionality principle, which means that the judge must analyse the severity of the infringement, the extent of the actual or poten - tial damage that may be caused, the legitimate inter - ests of third parties and public interest considerations. The judge can also request a bond or guarantee that will need to be posted by the plaintiff to guarantee the damages caused to the defendant if the final deci - sion of the case does not rule in the plaintiff’s favour or if the plaintiff does not pursue the case all the way through. Bond amounts are usually set by a judge on a case-by-case basis. Proceeding and bond amounts are regulated by civil law and are usually valued or assessed by an expert or appraiser appointed by the judge. In the case of a trade mark infringement, the owner of the trade mark may apply for the destruction or recall of infringing goods. However, this claim must fulfil the proportionality principle and this remedy will not apply if the destruction or impoundment is disproportionate in individual cases. 10.2 Monetary Remedies The general indemnification rules for damages under civil law apply. This means the owner of the infringed trade mark registration can seek compensation for all actual and direct damages resulting from the infringe - ment, including lost profits. Furthermore, to determine the amount of damages, the judge can factor in the value of the infringed goods or services, based on their market value or suggested retail price and the profits received by the infringer from the unlawful conduct. 10.3 Attorneys’ Fees and Costs Each party is responsible for its own costs. However, the losing party is required to reimburse the prevail - ing party for all litigation costs, including court fees, expenses and attorney fees for both parties, in the statutory amount set by the Costa Rican Bar Associa - tion. However, this does not include higher costs due to a fee arrangement.
Fees may be appealed if further recourse options have not been exhausted. However, if the resolution is final (ie, there is no further recourse), fees cannot be appealed. 10.4 Ex Parte Relief The Costa Rican constitutional due process principle requires that defendants receive notification and have the opportunity to participate in any proceeding that may affect their rights or cause harm. This includes the right to be heard prior to the issuance of a pre - liminary injunction. Under exceptional circumstances of irreparable harm or urgency, the court can order a provisional or tem - porary remedy without prior notice to the other party. However, the affected party must be notified of the court resolution and can present its opposition within a three-day period. This scenario is unlikely in trade mark proceedings but is available under the Costa Rican civil process. 10.5 Customs Seizures of Counterfeits or Parallel Imports In Costa Rica, parallel imports are permitted and there is no remedy against them from a trade mark per - spective, provided that the owner has recorded their contact and trade mark information in the customs database. If customs do detect an import of coun - terfeit products, a notice will be sent to the owner to inform them of the shipment. If deemed counterfeit, the trade mark owner is entitled to request that the shipment not be released and may initiate criminal proceedings.
11. Appeal 11.1 Appellate Procedure
It is possible to file appeals against any decision refusing a trade mark registration. These appeals are resolved, in the first instance, by the Trademark Office and in the second instance by the Administra - tive Board of Appeal of the Registry. The Costa Rican Trademark and Other Distinctive Signs Law grants the possibility to file an appeal against the Trademark Office’s resolution before the
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