COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
protection against other identical or similar signs to the point of confusion. Notwithstanding this, an opposition based on prior use of the trade mark may be filed. How - ever, 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 Indus - trial 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 from 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. Reg - istration may also be granted for the trade mark against which confusion is likely to be created. 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 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 recommended. It is important to take into consideration that design searches are not avail - able in Costa Rica. According to the Trademark
Office, this type of search may be implemented in the near future. Official searches are available, although the searches are normally made manually by the law firm’s personnel directly in the Public Registry’s database, as official searches incur a fee, are not binding for a possible evaluation of an applica - tion and no opinion is granted by the Trademark The term of registration in Costa Rica is ten years. Trade marks may be renewed indefinitely for successive 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 imme - diately 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 registration be amended to correct any error. The correction will not be admitted if it implies an essential change in the trade mark or an exten - sion 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 registration be reduced or limited. The reduction or limitation will only be registered upon presentation of a written declaration of the third party, with the signature certified by a notary public, by virtue of which they agree to reduce or limit the list. Office regarding the results. 4.3 Term of Registration
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