COSTA RICA Law and Practice Contributed by: Harry Zurcher, Marco López Volio and Kristel Faith Neurohr, Zurcher, Odio & Raven
If the requirements for trade mark registration are met, industrial designs may be admissible for trade mark protection. A trade mark can be any sign or combination of signs capable of distinguishing goods or servic - es, especially words or groups of words (includ - ing personal names), letters, numbers, figurative elements, figures, monograms, portraits, labels, coats of arms, prints, vignettes, borders, lines or stripes, combinations, and arrangements of colours, as well as any other distinctive feature. Likewise, they may consist of the form, presenta - tion or packaging of the products, their contain - ers, or wrappings or of the means or premises of sale of the products or services concerned. Costa Rica applies the classification of goods and services contained in the Nice Agreement. There are also certain government symbols that have special protection, such as flags, emblems and national symbols. Furthermore, in line with international treaties, other specific prohibitions can apply in respect of signs such as those of the Red Cross or of the Olympic Games. Additionally, Costa Rica recognises and protects trade marks that are famous outside the country but are not yet registered or in use locally. It is possible to validly refuse a trade mark in Cos - ta Rica taking into consideration foreign trade marks that are well known. 2.2 Essential Elements of Trade Mark Protection Distinctive character is required to apply for trade mark protection, in addition to the formal requirements of a trade mark application. Use is also important in Costa Rica. However, distinc - tive signs must be properly registered to be fully protected. Distinctive aptitude is acquired with
respect to the product or service to which it is applied. This means that the trade mark is not generic, descriptive or misleading of the prod - uct or service. The secondary meaning does not apply in Costa Rica. A brand can lose its dis - tinctive character when it has become a generic name, as an indicator of the business origin of the product or service to which it is applied, in commercial media and in the public domain. 2.3 Trade Mark Rights The registration of a trade mark grants its owner the right of exclusivity and enforceable rights of protection against other identical or similar signs to the point of confusion. The right of priority is applicable within the Registry and prior use rights can be claimed, even for unregistered trade marks, if actual prior use is proven. These rights are described in Costa Rican trade mark law and local jurisprudence. These rights persist during the term of the trade mark. Costa Rica is also a contracting party to the WCT, so Article 11 of the Trademark and Other Distinctive Signs Law is applicable. 2.4 Use in Commerce A trade mark is considered in use when it has been placed on the market, in the quantity and form that normally corresponds, considering the size of the market, the nature of the products and the modalities under which they are mar - keted as well as when the products or services have been exported or provided abroad from Costa Rica (if applicable). 2.5 Notices and Symbols According to Costa Rican legislation, the use of a specific type of symbol to denote that a trade mark is registered or that an owner asserts com - mon law rights in the trade mark is not manda - tory. However, if owners decide to use them, the
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