COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
For foreign trade mark owners to file infringe - ment claims in Costa Rica, the trade mark must be registered, or prior current use must be prov - en. Copyright is born from the idea and registra - tions are considered cross-border by the Costa Rican authorities, so a local registration is not necessary if a foreign one exists. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants The infringer cannot normally initiate declaratory judgment proceedings. If a preliminary injunc - tion is requested by the plaintiff a bond must be posted by the plaintiff to secure the dam - ages that may be caused by the defendant and the bond will be lost in the defendant’s favour if the plaintiff fails to pursue the claim to a favour - able conclusion. The defendant may pursue a counterclaim against the validity of the plaintiff’s registration regardless as soon as the defendant receives a formal notice of the plaintiff’s com - plaint. 7.7 Small Claims ADR mechanisms are not compulsory. ADR is not very common in intellectual property matters in Costa Rica, and even less so in trade mark and copyright cases. 7.8 Effect of Trade Mark and Copyright Office Decisions Trademark Office decisions are not binding on a judge. However, they can provide interpreta - tion and technical criteria that can be used by a court in its rulings. They can also be included as evidence in legal proceedings. 7.9 Counterfeiting and Bootlegging There is no definitive list of what constitutes a counterfeit trade mark or copyright and constitu - tion will depend on the evidence and the argu -
ments to prove that the counterfeit trade mark or work is not original. There are no special procedures addressing counterfeit trade marks. These cases will be handled by the administrative, civil or criminal courts according to the nature of the infraction and the specific claims of the affected party. Criminal liability may also fall on importers, dis - tributors or sellers or supply chain thereof of the products bearing the forged trade mark. In addition, it is possible to request the Customs Department include them on their databases so they can notify trade mark owners of any imports that may infringe registered marks. Trade mark owners may also provide customs with informa - tion to help them detect counterfeit products. Criminal liability is possible but this will proceed in line with the applicable criminal law and pro - ceedings. Regarding illegal or non-official reproductions, according to the Costa Rican Copyright and related Rights Law, there is no special proce - dure, but the Law on Procedures for Enforce - ment of Intellectual Property Rights is appli - cable. There is criminal liability, but this would proceed according to the applicable criminal law and proceedings. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special provisions for trade mark proceedings. The proceedings will follow the standard procedure rules for civil, administra - tive or criminal cases. The Costa Rican authori -
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