COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
response. In the response, the applicant must try to persuade the Copyrights Office that the application can obtain the relevant protection. 3.10 Related Rights Costa Rican law provides that copyright may also be protected by trade mark or related rights, but it is currently difficult to enforce copyright against prior fraudulent registrations and the criteria used by the Trademark Office are not uniform.
other conditions relating to its use, when necessary to avoid risks of confusion. Secondary meaning does not apply in Costa Rica. 4.2 Trade Mark Register Costa Rica has a Trademark Office that is part of the Costa Rican Public Registry. Searches Although it is not mandatory, proceeding with a trade mark search before filing an application is always rec - ommended. It is important to take into consideration that design searches are not available in Costa Rica. According to the Trademark Office, this type of search may be implemented in the near future. Official searches are available, although they are nor - mally conducted manually by the law firm’s person - nel directly in the Public Registry’s database. Official searches incur a fee, are not binding for a possible evaluation of an application, and no opinion is granted by the Trademark Office regarding the results. 4.3 Term of Registration The term of registration in Costa Rica is ten years. Trade marks may be renewed indefinitely for succes - sive periods of ten years, counted from the date of the preceding expiration. A renewal can be submitted one year before the expiration date. However, there is also a subsequent six-month grace period. If a registration expires or is not submitted within the six-month grace period, it cannot be reactivated. In this case, the only option to maintain protection would be to immediately reapply for the registration and obtain it. According to Costa Rican legislation, the owner of a trade mark may request, at any time, that the registra - tion be amended to correct any error. The correction will not be admitted if it implies an essential change in the trade mark or an extension of the list of goods or services covered by the registration. The owner of a registration may request, at any time, that the list of goods or services covered by the reg - istration be reduced or limited. The reduction or limi - tation will only be registered upon presentation of a written declaration of the third party, with the signature
4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration
Trade marks in Costa Rica must be registered to have complete protection and enforceable exclusive rights. Very limited rights are acquired by using a trade mark. Rights can be claimed, even for unregistered trade marks, if actual prior use is proven, and the registra - tion of a trade mark grants its owner the right of exclu - sivity and enforceable rights of protection against other identical or similar signs that are likely to cause confusion. Notwithstanding this, an opposition based on prior use of the trade mark may be filed. However, they will be declared inadmissible if the opponent does not prove that they have not applied to the Industrial Property Registry for registration of the used trade mark. The Industrial Property Registry will accumulate the files relating to the application for registration that is the object of the opposition and the application for registration of the used trade mark, to resolve them jointly. The opponent must file the application within 15 days of the filing of the application. When the prior use of the opposing party’s trade mark is proven and the requirements set out in this law for registration of the trade mark have been complied with, registration will be granted. Registration may also be granted for a trade mark against which confusion is likely to arise. In these cases, the Industrial Property Registry may limit or reduce the list of goods or services for which each of the trade marks may be used, and may establish
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