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REGISTRATION OF TRADEMARKS, COMMERCIAL NAMES, AND ADVERTISING SLOGANS 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, commercial names and the advertising slogans are distinction signs regulated in this country by the Law of Trademarks and other Distinction Signs, No. 7978 of January 6, 2000, and its Regulations.
Costa Rica is also 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).
DEFINITION OF "TRADEMARK", "COMMERCIAL NAME" AND "ADVERTISING SLOGANS" ACCORDING TO COSTA RICAN LAWS AND REGULATIONS:
Types and Clasification of Distinction Signs
A. TRADEMARK: Section Two of the Law of Trademarks and other Distinction Signs defines “trademark” as: “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”. Trademarks may be constituted by words or word combinations, letters, numbers, graphical elements, figures, monograms, pictures, labels, patterns, illustrations, among others, as well as by the form or presentation of products or services. The same criteria apply for commercial names.
According to the indicated Law of Trademarks and other Distinction Signs, the products and services to be protected by a trademark are classified according to the International Classification of Products and Services of Nice. Based on such classification, each trademark must be filed indicating the specific class for its registration, according to the products and services to be protected. Property of a trademark is acquired for ten years, renewable for identical terms at the owner’s request.
B. COMMERCIAL NAME: The above indicated Law defines the “commercial name” as: “the denominative or mixed sign that identifies and distinguishes a company or a specific commercial establishment”. The commercial name is a distinction sign created exclusively for the identification of a business or commercial establishment, and the difference between it and a trademark is that the commercial name does not protect the services or products that the business or commercial establishment manufactures, sales or provides.
Additionally, commercial names are not classified according to the international trademarks classifications (as trademarks are) indicated above, instead, they are required to indicate the type of business for which they will be registered. The registration of a commercial name is for an indefinite term and it is terminated with the extinction of the business that owns it.
C. ADVERTISING SLOGANS: The “advertising slogan” or “commercial advertising slogan” is a distinction sign defined as a: “slogan, advertisement, motto, phrase, combination of words, design, engraving, or any other similar, as long as it is original, characteristic and it is used to catch the attention of consumers and users on a specific product, service, business, establishment or commercial establishment”.
The application for an advertising slogan requires to refer to the full file or registration number of the specific trademark of commercial name that the advertising slogan will promote.
The Costa Rican Justice Department (“Ministerio de Justicia y Gracia”) has a bureau in charge of all trademark registrations and of all distinction signs, which is denominated as the “Industrial Property Register” (“Registro de la Propiedad Industrial”).
Any individual, company or association wanting to register trademarks, trade names, or advertisement slogans has to file a formal petition before the Industrial Property Register.
In the case of foreign applicants a special power of attorney is required. This power of attorney must be signed by the applicant or by the legal representative of the company, and can be drafted to be used for the registration and opposition procedures of all the trademarks, commercial names and advertisement slogans that such individual, company or association will apply for, or to be limited only for the registration procedure of a specific trademark, commercial name, or advertisement slogan. This power of attorney can also be used for national applicants in order to speed up and simplify the registration procedure.
Additionally, for the drafting and filing of the application of a distinction sign, according to its type, it will be necessary to provide the Industrial Property Register with the following information:
(i) a description of the products or services to be covered and the international class or classes for the registration of the trademark (in case of a commercial name, the type of business to be covered by the commercial name and a description of its commercial activities must be indicated);
(ii) a digital copy (with format allowing us to make modifications on it) or eight printed copies of the design or logo (if any) in full color (if the colors of the logo are intended to be protected) with an approximate measure of no less than 8 cm x 8cm or higher than 10 cm x 10 cm;
(iii) if priority rights are to be claimed, a letter issued by the foreign entity in charge of the registration of intellectual property, certifying that the foreign application for the trademark registration has been filed or it is already registered, is required.
Once the application has been filed before the Intellectual Property Register, it must be reviewed to confirm it meets the applicable formal requirements, and once this is completed, the bureau prepares a report called “Informe de Novedad” (report on similarities to existing registered trademarks) and concludes with a determination on whether the trademark complies with 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 its registration.
If there is no opposition within the given time, the Industrial Property Register issues a certificate granting ownership of the trademark, commercial name or advertising slogan. If there is an opposition, the bureau gives the applicant a two month term of to reply to it; thereafter, this entity issues a ruling admitting or not the registration. Such ruling can be appealed by the applicant or by the opposing party/parties in a Court of Law (the “Tribunal Registral Administrativo”).
On the other hand, if the Register rejects the registration, based on its “Informe de Novedad”, this resolution has two recourses: one to revoke the ruling 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 (the “Tribunal Registral Administrativo”).
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