COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation An opposition to a trade mark application needs to be filed within two months of the first pub - lication date of the trade mark in the National Gazette. No extensions can be requested. Alter - native dispute resolution (ADR) is not very com - mon in intellectual property matters, and even less so in trade mark cases. However, if this happens, the Trademark Office would normally suspend the procedure until an agreement is reached, provided they agree. Under Costa Rican legislation, a revocation request can be filed within four years to seek annulment of a trade mark, while a non-use revo- cation request can be filed after five consecutive years of non-use. These periods are calculated from the trade mark’s registration date. 5.2 Legal Grounds for Filing an Opposition or Cancellation The legal grounds of an opposition to a trade mark application are normally similar to filing an opposition to registered trade marks, although any prohibition to register is a valid basis to oppose. Lack of distinctiveness, dilution of a trade mark or confusing trade marks are also legal grounds for an opposition. The legal grounds to file a cancellation proceed - ing are: • prior rights of third parties; • any of the legal grounds by which the Trade - mark Office can reject a trade mark (see 4.10 Refusal of Registration ); and
• reproduces or imitates, totally or partially, a flag or other emblem, acronym, denomina - tion, or abbreviation of denomination of any country or international organisation, without authorisation of the competent authority of the country or organisation; • reproduces or imitates, in whole or in part, an official sign of control or guarantee adopted by a country or public entity, without the authorisation of the competent authority of that country; • reproduces coins or banknotes of any coun - try, other commercial documents, stamps, seals in general; • includes or reproduces medals, prizes, diplo - mas or other elements that lead people to suppose the obtaining of awards with respect to the corresponding product or service, unless the awards have truly been granted to the registration applicant and this is verified when filing for the registration; • it consists of the denomination of a plant vari - ety protected in Costa Rica or in any foreign country with which a treaty or agreement has been signed for the protection of plant varie - ties; and • where the trade mark consists of a label or other sign composed of a set of elements, and the name of a product or service is expressed therein, the registration will only be granted for that product or service. If the Trademark Office objects to the applica - tion, they will grant a 15 or 30-day term to file a response. In this response, the applicant must try to persuade the Trademark Office that the application can obtain the required protection. 4.11 The Madrid System Costa Rica is not part of the Madrid System for international registrations.
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