Costa Rica (CR)
03-27-2012 (Newsletter Issue 5/12)
Guidelines for TM Applications
On February 21, 2012, the Administrative Guidelines DRPI-02-2012 was published in the Official Gazzette No. 37, which set forth when the PTO will officially record the filing date of an application.
To grant a date for the filing of applications, the PTO has to assign a time and date and will admit it to procedure, only if it complies with certain requisites. These include that it contains the identity of the applicant, the address or representative in the country, the mark itself (if it is a mixed mark, a copy must be attached), the products/services it pretends to protect and proof of payment.
Taking this into account, the priority date will be counted from the date which all the requisites are fulfilled, regardless of the date that the PTO receives the application. Furthermore, the Registry will only evaluate the application once the aforementioned minimum requisites are fulfilled and the filing date has been assigned. Finally, the priority period will be counted from this date for all legal purposes.
Failure to comply with these guidelines will result in the delay of granting the date of the filing of an application.
Source: Zurcher Lawyers, Costa Rica
Legal basis is the Trademark and Other Distinctive Signs Law of February 1st, 2000, as amended.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition. The right to register a mark belongs to the earliest bona fide user of the mark or to whoever first files the application if there is no prior use.
Trade names and slogans can be registered, but no classification system is used.
Registrable as a mark is any sign or combination thereof, capable of distinguishing goods or services; namely words and sets of words -including names of persons-, letters, numbers, numerals, figurative elements, monograms, pictures, tags, heraldry, lines, traces, patterns, combinations and dispositions of colors and sounds. Likewise, it may consist of the shape, presentation or disposition of products, their packaging or wrapping, as well as that of the channels or places in which the products or services are sold.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names, slogans, emblems, geographical indications and indications of source.
The application is filed at the Trademark Section of the Industrial Property Registrar („Registro de la Propiedad Industrial”).
Multi-class applications are possible.
Foreign applicants need a local agent.
A power of attorney certified or authenticated according to the laws of the place of execution is required (consular legalization is not mandatory).
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is approx. 8 months. The first office action is taken after approx. 2 months.
During the registration process, the trademark application is published three times in the official journal „La Gaceta“.
The opposition period is 2 months from the date of the first publication of the trademark.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
Protection begins with the date of registration. Provisional protection begins with the date of application, but it can only be asserted after registration. A trademark registration is valid for 10 years. It is renewable for further periods of 10 years.
Any interested party may request cancellation of a mark that has not been used in Costa Rica during a period of 5 years prior from the date of the cancellation action.
Cancellation may be partial if the lack of use only affects some of the wares or services covered by the registration.
The official fee is US$ 50.00 (approx. EUR 35.00) per class. An additional fee of approx. EUR 90 to EUR 125 is charged for publication of each application in the official journal. No additional fee is charged for registration and issuance of a certificate of registration.
Trademark Licence Agreement
In Costa Rica licence agreements must be in writing. It is permitted to license the use of unregistered trademarks. A licence may be restricted to some or all of the goods or services covered by the trademark. The sale of a registered trademark does not automatically terminate the licence unless otherwise stated in the licence agreement. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the recordal of a licensee with the Trademark Office. Recordal is not mandatory, but a licence must be registered to have effect in respect of third parties. There is no time frame for a recordal and no prescribed form for a licence agreement.
The following documents are required for a recordal:
1. An application for the registration of a licence
2. The original licence agreement or a certified copy, signed by both parties, duly legalised and notarised
3. A power of attorney from the licensee or the licensor
If the documents are not in Spanish a translation is required.
The licence agreement must contain:
1. The names and addresses of the parties
2. The trademark
3. The classification of the trademark
4. The products/services protected by the trademark
5. The duration and territory
The licence becomes effective on the date agreed upon in the licence agreement, but it is enforceable against third parties only upon the application date for entry of the registered user. The licence is not required to be published.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. The licensee may call upon the trademark owner to institute infringement proceedings if agreed upon in the contract. He may institute proceedings in his own name if the proprietor refuses or neglects to do so, if agreed upon by the parties in the contract. The licensee must cite the licensor a co-defendant in any infringement proceedings, unless otherwise agreed in the contract.
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We would like to thank the following law firms for their assistance in updating the information provided:
Asesores Legales En Propiedad Industrial, San Jose , Costa Rica
Moeller IP Advisors, Buenos Aires, Argentina
Bufete Gamboa & Dengo, San José, Costa Rica
Facio & Cañas, San José, Costa Rica
Soley Saborio Fallas & Asociados, San José, Costa Rica