COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
5.5 Legal Remedies Against the Decision of the Trade Mark Office It is possible to file the pertinent appeals against a decision to accept an opposition. These appeals are resolved in the first instance by the Trademark Office and in the second instance by the Administrative Board of Appeal of the Reg - istry. In both cases, a hearing will be served, and the applicant can file the relevant arguments to try and reverse a decision to refuse the application. Finally, resolutions of the Trademark Office or Administrative Board of Appeal can be chal - lenged through an ordinary lawsuit before the Judicial Administrative Conflicts Court. 5.6 Amendment in Revocation/ Cancellation Proceedings Although it is uncommon, the trade mark owner may request an amendment during revocation or cancellation proceedings while they are still pending. However, there is no guarantee that the amendment will be accepted. 5.7 Combining Revocation/Cancellation and Infringement Cancellation and infringement proceedings will generally run separately. 5.8 Measures to Address Fraud There are no specific procedures for revoking or cancelling trade marks filed or registered fraudu - lently. Therefore, the fraud can be alleged by the affected party on any type of proceeding where the legality of the trade mark is in question. If the trade mark has not been registered an oppo - sition can be filed. However if registration has taken place ordinary cancellation or invalidation proceedings will apply. Furthermore it is possible
• any violation to essential formalities of the registration process. 5.3 Ability to File an Opposition or Revocation/Cancellation Any interested party may file an opposition against the registration of a trade mark. This pro - cedure does not require an attorney, although they are normally filed by the legal representa - tives of the opponent. The opponent can file the opposition without holding a trade mark, although under Costa Rican legislation, an application must be filed by the opponent to support the opposition. The average office and attorneys’ fees are USD1,000. A revocation or cancellation proceeding can be initiated by the owner of an existing trade mark, any interested third party, or the Trade - mark Office itself. If a proceeding is filed by a third party, they must demonstrate a legitimate legal or commercial interest in the matter or the action may be rejected. The third party must clearly state and explain their legal or commer - cial interest in the cancellation proceeding. 5.4 Opposition or Revocation/ Cancellation Procedure Once an opposition is filed, the applicant will be granted a two-month term to file its arguments. Once the Trademark Office has both parties’ arguments, the opposition will be resolved. The applicant is not obliged to respond to the oppo - sition, although it is highly recommended. A revocation or cancellation action is typically initiated before the Trademark and Copyright Offices. However, if necessary, legal actions can also be filed before the Costa Rican courts.
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