COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
According to the Costa Rican Trademark and Other Distinctive Signs Law, at the request of any person with a legitimate interest, the Trade - mark Office may cancel the registration of a trade mark or limit its scope when the owner has caused or allowed it to become the generic name of one or more of the goods or services for which it is registered. Whoever represents or communicates protected literary or artistic works to the public, directly or indirectly, whether by wire or wireless means, including making their works available to the public, in such a way that members of the public may access these works from a place and at a time of their own choosing, without the authori - sation of the author, right holder or representa - tive, will be liable to criminal sanctions. Costa Rica is also a contracting party to the WCT, so Article 12 of the Copyright and related Rights Law is applicable. 7.3 Factors in Determining Infringement According to the Law on Procedures for Enforce - ment of Intellectual Property Rights, several fac - tors are considered in determining whether the use of a sign constitutes trade mark infringe - ment. In particular, the decree of similarity between signs (grammatical, graphical, visual, phonetical), common target markets or distri - bution channels, and intentionality are usually analysed in these types of claims. Any element that may lead to confusion among consumers will also be a factor during the law - suit, such as intensity and duration of advertis - ing and publicity schemes and the degree of the trade mark’s recognition. After conducting an overall assessment of the similarity of the signs, the goods and services and the distinctiveness of the trade mark, the judge must then establish
that these elements lead to a likelihood of confu - sion or association with the existing trade mark. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no formal prerequisites or restrictions to filing a lawsuit. However, it is important to have a registered trade mark and adequate evi - dence to demonstrate the infringement, as well as the damages caused by the illegal or unfair competition actions. Furthermore, before starting a judicial process, the owner of a trade mark may send, at its dis- cretion, a warning letter to the alleged infring - er and demand a declaration of agreement to cease and desist from the respective trade mark infringement, threatening further legal action in the event of non-compliance. This process is not required but is frequently employed to try to resolve the conflict without litigation. 7.5 Lawsuit Procedure Civil lawsuits for infringement will be heard before the Judicial Civil Court in an ordinary civil judicial process. Typically, the process involves the filing of the lawsuit, the defendant’s response, one preliminary hearing to review the process formalities, claims and evidence that will be admitted by the Court, and one additional hearing to obtain testimony from witnesses and allow closing arguments to be presented. The Court will then issue the first instance ruling. This ruling can be appealed before the First Chamber of the Supreme Court. To file a lawsuit, the parties need to be repre - sented by a lawyer and it is usual to execute powers of attorney that require legal authenti - cation. Furthermore, for evidence purposes it is sometimes required to have notary public certi - fications of documents or affidavits.
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