COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
6.3 Registration or Recording of an Assignment or Licence In Costa Rica it is possible to assign an appli - cation or grant a licence in relation to it during the trade mark registration process. In order to be effective, assignments have to be recorded before the Trademark or Copyright Offices. Registration of licences is not mandatory but is highly recommended. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Claims to request the annulment of a registered trade mark under the Costa Rican Trademark and Other Distinctive Signs Law must be filed within four years of its registration. Civil trade mark lawsuits for infringement between commercial entities or companies should be filed within four years of the date that the infringement ceases. If the infringement involves individual persons, the statute of limita - tions is up to ten years. Some infringement actions can have more extensive statutes of limitations. If the infringe - ment has continuous effects, then the term to file a lawsuit will remain open indefinitely. This applies to unfair competition cases in which the offender remains active in commerce infringing the trade mark rights of the other party. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Infringement of any intellectual property rights established in national legislation or international conventions in force can be pursued.
The owner of a registered trade mark can also pursue civil actions for civil liability for damages and losses caused by the infringement as well as unfair competition claims which occur when the offender’s infringement produces confusion with the products or with the activity of another person or company, by using, imitating or repro - ducing intellectual property rights from the other party. These claims can potentially include dilu - tion and cybersquatting, although those are not expressly contemplated in Costa Rican law. Lack of originality may be the ground of an oppo - sition for copyright infringement. Who bears the burden of proof of originality, or lack of original - ity, in these cases will be up to the plaintiff. Nonetheless, if the owner of the trade mark can justify a detrimental effect on its rights, it is possible to include dilution or cybersquatting claims. Furthermore, the affected person can also file criminal actions when the infringement constitutes a felony. Within the civil infringement actions it is possible to file claims for any act that may have a det - rimental effect on a trade mark owner’s rights. These claims can potentially include dilution and cybersquatting, although these are not expressly contemplated in Costa Rican law. In particular, the trade mark owner may take action against the use of a sign identical with or similar to the trade mark for goods or services which are not similar to those for which the trade mark enjoys protection if the trade mark has a specific reputation in Costa Rica or a well-known global brand and the use of the sign without due cause takes unfair advantage of, or is detrimen - tal to, the distinctive character or the reputation of the trade mark.
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