TRADEMARK REGISTRATION IN COSTA RICA
In
Costa Rica, the rights to industrial and intellectual
property are guaranteed by the Constitution, which in
its Section 47 states that “Any author, inventor,
producer or merchant shall temporarily have the exclusive
property of its inventions, trademarks and commercial
names, all according to the law”. Trademarks
and commercial names are regulated in this country by
the Central American Convention for the Protection of
Industrial Property and the recent Trademark Law, No.
7978 of January 6, 2000.
In
addition, Costa Rica is a signatory of several international
agreements related to intellectual and industrial property
rights (TRIPS, Paris Convention for the Protection of
Industrial Property, Convention establishing WIPO, Bern
Convention, among others).
OWNERSHIP SYSTEM
The
protection of trademarks and commercial names is made
in Costa Rica following a mainly attributive system which
is very formal and mostly based in being the first at
filing and registration (with exceptions such as the prior
filing for a trademark in a country signatory of the Paris
Convention for the Protection of Industrial Property –priority
for six months from filing-).
Property
of a trademark is acquired for a ten year term, renewable
for identical terms at the owner’s request. Property
of a commercial name is acquired for an indefinite term.
The
registration of industrial property is voluntary, not
being necessary to register trademarks or commercial names
in order to use them, as long as no similar ones are already
registered.
The
owner of the trademark may be any individual or corporate
entity, either Costa Rican or foreign; however, such owner
must have a commercial establishment, an enterprise, an
industrial establishment or a business that offers services
either in Costa Rica or elsewhere, where the trademark
is being used.
CLASSIFICATION
OF TRADEMARKS
Local
laws differentiate between trademarks (“any
sign or combination of signs that allows the distinction
between the goods or services belonging to a person from
the ones belonging to another person, for the reason of
such being considered sufficiently different or capable
of identifying the goods or services to which they apply,
before the ones in their same species or class”)
and commercial names (“denominative or mixed sign
that identifies and distinguishes a company or a specific
commercial establishment”).
According
to the previously referred Central American Convention,
trademarks are divided in Industrial or Fabrication Trademarks,
Commercial Trademarks and Service Trademarks, protecting
a total of forty two classes of goods and services.
WHAT CAN BE REGISTERED AS A TRADEMARK?
Any
sign or combination of signs that by reason of its special
characteristics may clearly describe products, merchandise
or services belonging to an individual from the products,
merchandise or services of another individual can be registered
as a trademark. Such trademarks may be constituted by
words or word combinations (including people’s names),
letters, numbers, graphical elements, monograms, pictures,
labels, patterns, among others, as well as the form or
presentation of products or services.
PROCEDURE
The
Costa Rican Justice Department (“Ministerio
de Justicia y Gracia”) has a bureau in charge
of registering trademarks, trade names, signs and symbols
of advertisement. Its name is “Industrial Property
Register” (“Registro de la Propiedad Industrial”).
Whoever
wants to register trademarks, trade names, signs and symbols
of advertisement has to file a petition before the Industrial
Property Register requesting it. Non-Spanish trademarks
can only be filed for by foreign applicants.
In
the case of foreign applicants, a simple statement of
use of the trademarks (“Declaración de
Adopción”) or a copy of the trademark
certificate (if registered abroad) and a Special Power
of Attorney, are required.
The
petition must be studied for its formal requirements,
and once this is done the bureau carries out a report
called “Informe de Novedad” (report on similarities
to existing registered trademarks) and a determination
on whether the trademark complies with the local legal
requirements. If the report has a positive outcome, the
Industrial Property Register issues a resolution to be
published in the Government’s Official Newspaper
(“La Gaceta”), with the purpose of
giving third parties a two month term to oppose the registration
of the trademark. If no one shows opposition in the given
time, the Industrial Property Register issues a certificate
granting ownership of the trademark, trade name, sign
or symbol of advertisement.
If
there is an opposition, the bureau gives the petitioner
a term of two months to reply to it. Thereafter, the Industrial
Property Register issues a motion admitting or not the
registration of the trademark. The ruling of the bureau
can be appealed in a Court of Law.
On
the other hand, if the Register rejects the registration
after its filing, based on its “Informe de Novedad”,
this resolution has also two recourses: one to revoke
the motion and another to appeal it. The recourse to revoke
is filed before the Industrial Property Register, and
the recourse of appeal is filed in a Court of Law.
Lang & Asociados specializes in the registration
of trademarks, trade names, signs and symbols of advertisement.
For further information, do not hesitate to contact us
at telephone (506) 2047871; fax (506) 2047872 or e-mail:
info@langcr.com
