General trademark information of Costa Rica

Requirements:
In Costa Rica a power of attorney, duly notarized is required for trademarks matters.

The order of the application process is as follows:
The application is filed at the Trademark Office of the National Registry of Costa Rica.
Multi-class applications are possible.
The application process includes a formal examination, an examination of distinctiveness, and a search for prior trademarks.
During the registration process, the trademark application is published three times in the official journal „La Gaceta“.
The processing time from first filing to registration is approx. 6-9 months.

Timeframe:
The processing time from first filing to registration is approx. 6-9 months.

Duration:
Protection in Costa Rica 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. Renewals can be filed as early as one year prior to the expiration date.

Proof of Use:
Trademark Proof of use in Costa Rica is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

I. General information about trademark registration in Costa Rica

• Registration is not required to establish rights in a trademark; sufficient prior use establishes rights in a trademark; this is a "first-to-use" jurisdiction.

If a party is using a mark without registration and another party tries to register it, such application can be contested if prior use is proven. Such use must be at least two months from the filing date of the mark to be contested.

• Use of an unregistered mark for any goods or services is legal,

as long as there is no other party contesting such use. If that third party proves it has a more valid right, then the use of that mark would become illegal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

However, Costa Rica does have several pieces of legislation regarding packaging/labeling depending on the products involved. This is usually revised at the time the owners request the health registrations that will allow them to commercialize their goods in Costa Rica, such as the case for cosmetics, health goods, pesticides for household use, medicines, and natural products, for instance.

A. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

four to eight months.

B. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark;
  • it provides prima facie evidence of ownership and validity;
  • it provides regional, national, and/or local protection

(Due to the principle of territoriality, protection will be only at national level.);

• it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
• it allows the registrant access to bring actions in particular courts;
• it helps to deter others from unlawfully using the trademark;
• it provides a defense to infringement;
• enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
• it confers the ability to recover maximum monetary damages for infringement;
• it encourages licensees and provides the opportunity to generate royalties through licensing;
•  it provides exclusivity to the owner.

II. Pre-Filing

A. Registrable Trademarks

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names

(The Trademark Office (TMO) reserves the right to request a consent for a name);

• devices;
• certain three-dimensional shapes

(The shape must be highly distinctive, especially if it involves a bottle/receptacle.);

• colors

(only if shown in a distinctive shape. Colors per se are not registrable);

• slogans

(A slogan needs to be linked to a registered mark or a mark in the process of being registered. If linked to an application that is refused, the slogan will not achieve registration. However, an applicant may indicate a new mark to continue the registration process. If the registration of a mark expires, a slogan linked to it does as well);

• sounds;
• smells (olfactory trademarks);
• holograms;
• motion.

• The special requirements for the registration of three-dimensional shapes are:

 It is best if applicant provides some description and indication as to how the shape is distinctive. This is particularly important to prevent an assessment of lack of distinctiveness.

• The special requirements for the registration of colors are:

 They cannot be isolated colors. They must appear in a distinctive shape to be considered for registration.

• The special requirements for the registration of sounds are:

 It must provide the musical staff ("pentagrama") form of it (to allow its execution) and a recording of the sound. A written description of the mark can be included as well.

• The special requirements for the registration of smells are:

 (i) an objective, clear, and precise description of the aroma; (ii) at least three samples of the aroma (essence or fragrance) that are intended for protection, duly packaged, or contained in a suitable container for its conservation, which will be available to interested parties during the time period to file oppositions.

• The special requirements for the registration of holograms are:
1. An image that captures the holographic efffect in full.
2. Additional views or images of the hologram from different angles.
3. A description explaining the holographic effect.
    

• The special requirements for the registration of motion are:
1. A clear description of the mark.
2. Motion sequence by frame, which can be by means of an MP4 file consisting of a video of the mark in motion.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

(Now only in black/white devices, the following indication can be added in the application: the applicant reserves the right to use the mark in all combinations of font, size, color and shape thereof.)

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • well-known marks

(Now a request at the time of filing can be made to protect a well-known trademark. Otherwise, such assessment can be acquired when a third party opposes a trademark application based on notoriety and the mark is not registered in Costa Rica, since, by law, an application must be filed along with the opposition. If the opposition proceeding is successul, and the notoriety proof is substantive, the TMO or the Administrative Register Court (if defended in second instance) may issue a notoriety statement.);

• service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning)

(The issue of acquired distinctiveness is under discussion, as the TRIPS Agreement indicates that rulings to determine registrability on the basis of secondary meaning are optional. Consideration is being given to having acquired distinctiveness be taken into account provided sufficient proof is furnished to the TMO.);

• marks that function principally as surnames

(depending on the combination of words);

•  isolated colors or simple colored shapes (e.g., a colored circle).

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  •  There is a specific chapter in the Act N° 7978 referring to this type of registration, which has its own set of regulations.

• The following products or categories are subject to GI protection in this jurisdiction:

All of the products from the Nice Classification.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  • disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law;
  •  avoid or anticipate official actions, third-party oppositions, or potential litigation (Trademark searches in Costa Rica are not binding. Because they are not “official,” the results of a search do not guarantee the acceptance/rejection of an eventual application.).

• The national office is accessible online at the following URL:

 https://www.rnpdigital.com/propiedad_industrial/index.htm. Electronic applications available now through the system WIPO-File. It requires a digital signature to register. One may also access information on the marks by name, registration number, application number, applicant, etc. at WIPO-Publish (https://rpi.rnp.go.cr/wipofileindex/xhtml/sesion/index.xhtml) --no registration required--patent and industrial design information is available as well. Additionally, if someone "registers" at the Public Registry site, there is a section called "Sistema de Certificaciones y Consultas Gratuitas" (Certification System and Free Consultation) that has a section on trademarks, in which one can enter the file number of an application and obtain all the registration history of that mark (in Spanish only). There is another option called "TM Consultation," where one can enter the name of the mark and the system displays all marks including that term. If one so chooses, one can check each hit and make further consultations with the Trademark Office.

• The official register can be searched online at the following URL:

 https://www.rnpdigital.com/shopping/login.jspx. However, one must register and create a password to access the information therein. Additionally, you can access WIPO-Publish for more concrete information: https://rpi.rnp.go.cr/wipofileindex/xhtml/sesion/index.xhtml.

C. Use

• An applicant benefits from pre-filing use of a trademark.

• The benefits of pre-filing use are:
  •  Rights to a trademark can be asserted through prior use and notoriety and as a basis for filing. Use also will be of assistance during examination of the application by the Trademark Office, which takes into account prior use and notoriety in considering the novelty and originality of a trademark. Note, however, that in order to file an opposition against a third party, the opposer must own a trademark registration for the mark forming the basis of the opposition or must file a trademark application for the mark within two weeks from the opposition filing date.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • a registry (other than the usual trademark registry)

(A formal application to request recognition of notoriety can be filed now. Directive DPI-0003-2019 lists a guide of evidence elements that should accompany the application for notoriety (mainly, the presence and scope of application of the mark, its value, diffusion, use, age, intensity, and recognition by the consumer public). If the application is admitted, it will be published in the Official Gazette and if there are no oppositions by third parties within the following two months after publication, a declaration of notoriety of the sign will be made. This can be recorded against registered marks as well.);

• an administrative process

(As of August 7, 2019, any interested party can file for a claim on notoriety of a trademark. Before, the process of declaration of a notorious mark had to be done through an opposition, nullity, or reply to an action from the TMO. However, based on the recently published guidelines, the possibility of making a request for the declaration of notoriety of a trademark can be initiated, without the need for said application to be linked to other administrative proceedings. That is, the TMO will accept express requests for a declaration of notoriety. Such an application must be accompanied by the proof that demonstrates the reputation of the brand. Said material must refer to: (a) the extension of its knowledge by the relevant sector of the public, as a distinctive sign of the products or services for which it stands; (b) the intensity and scope of diffusion and publicity or promotion of the brand; (c) the antiquity of the brand and its constant use; (d) the analysis of production and marketing of the products that the brand distinguishes; (e) the duration and geographical scope of any registration, and/or any application for registration, of the trademark, to the extent that they reflect the use or recognition of the trademark; (f) the proof of the satisfactory exercise of the rights to the trademark, in particular, the extent to which the trademark has been recognized as well known by other competent authorities; (g) the value associated with the brand.).

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Trademark Law Treaty;
  • Nice Agreement;
  • Vienna Agreement;
  • Lisbon Agreement.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service.

For registration of trade names, however, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

It is advisable to indicate whether the rights are in equal proportion.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • description of trademark;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney

(This can be filed within the third month from the filing date in Costa Rica. If the power of attorney is not filed with the application, the applicant can file through a business agent. Please also note that if there is a change of attorney during prosecution, a power of attorney must be filed. If fully legible and without cuts, a scanned copy of the POA will suffice.);

• official filing fee;
• priority claim, where priority of an earlier application is claimed

(The priority claim can be made also within two months from the application date. The support document should be filed within the third month. This information will appear in the publication is the priority document is duly filed before the edict to publish the mark is granted.).

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • state or country of incorporation;
  • description of trademark;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • official filing fee;
  •  a Promissory Note to support an application made as a Business Agent.

• The list of goods and services in this jurisdiction may specify:
  • the relevant class heading;
  • the relevant local subclass and/or subgroup;
  •  a combination of the class heading and a specific list of goods/services.

• The following number of copies of the trademark must be submitted:

just one sample as an image file (jpeg, jpg, gif, bit).

• In this jurisdiction, the following types of registration are available:
  • national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications can be filed online at the following URL:

 https://rpi.rnp.go.cr/wipofileindex/xhtml/sesion/index.xhtml. You need to have a digital signature and must register first to access the system. Only local attorney or legal representative for national companies may register.

• The official file can be accessed online at the following URL:

 https://rpi.rnp.go.cr/wipofileindex/xhtml/sesion/index.xhtml. Since a digital signature is required, you will be able to see documents uploaded under such signature. You cannot see documents filed by any other parties. Through Wipo-Publish, you can see a history of the mark in terms of the different filings or decisions taken in the registration proces.

• Applications are not officially searched as to prior trademarks.

TMO does conduct searches at the request of users. However, results are not binding and do not follow a specific helpful order that may allow user to really discriminate in determining possible antecedents. The certification listing search results is accompanied by the following legend: The result of this search does not guarantee the absence of another brand or distinctive sign, similar to the one as requested, nor does it bind in any way the actions and future resolutions of the Industrial Property Register. Thus, general practice is that applicant will seek support of a local agent in conducting the trademark searches.

B. Priority

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

The filing date will be the date when the application is actually filed in Costa Rica provided the application complies with all form requirements. The Certificate of Registration, if granted, will show the priority claim information if the certified copy of the priority document had been filed within the set deadlines as established by the Trademark Act N° 7978.

C. Classification

• This jurisdiction uses the Nice Classification System.

• If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services, but separate applications are also permitted.

 It is recommended that a separate application for each class be filed to avoid delays in the event that one class encounters an obstacle. An applicant can also divide an application to pursue goods covered by a particular class.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

D. Representation

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, even if not a citizen of or domiciled in the jurisdiction;
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • online.

Full details can be seen now through WIPO-File. (https://rpi.rnp.go.cr/wopublish-search/public/ Only filed documents cannot be located here. To that end, the public database of the TMO building must be accessed.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • citizenship of applicant;
  • application number;
  • application date;
  • goods/services;
  • priority claim information;
  • representation of trademark;
  •  publication date, name of the legal representative, and full chronology of the registration process.

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
  • conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
  • The existence of a valid coexistence agreement between the applicant and the cited registrant will not be accepted as evidence permitting registration of the application.

 Although a coexistence agreement can be filed in a defense, the same is not binding and usually does not make an impact in the refusal of the mark.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

 This is also specifically covered in Article 28 of the Trademark Act: "Article 28.– Unprotected elements in complex marks. Where trademarks consist of a label or other sign composed of a series of elements, protection shall not extend to the elements contained therein which are in everyday or necessary use in trade."

• The order of the application process is as follows:
  • examination, publication, registration.

C. Prosecution

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application;
  • the pending application establishes prima facie proof of ownership of a trademark;
  •  the filing of an application consolidates rights obtained through use of the mark.

D. Opposition

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  •  rights in a company name; unauthorized use of specially protected emblems or national insignia.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date:

once the application is published for the first time in the official newspaper The Gazette.

• The opposition period ends on the following date:

two months form the first publication date (applications are published for three consecutive days.)

• Anyone may initiate an opposition

 provided there is a valid foundation to oppose the mark.

• Oppositions cannot be filed online.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

The application is national and covers the whole territory. However, in cases where only some goods/services are being transferred (co-ownership of the registration) limitations in territory coverage could be set.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

 However, if the assignor will keep another mark named the same as the one being transferred with goods that may cause confusion, the TMO will not allow a partial transfer of the marks. That is, marks with the same name and related good must all be transferred. There cannot be two different owners for marks named identically and with similar scope of protection if that would prevent consumers from establishing the correct origin of the goods.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

However, if the assignor will keep another mark named the same as the one being transferred with goods that may cause confusion, the TMO will not allow a partial transfer of the marks. That is, marks with the same name and related good must all be transferred. There cannot be two different owners for marks named identically and with similar scope of protection if that would prevent consumers from establishing the correct origin of the goods.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal)

(Please note that taxes are payable on the consideration of the mark; thus, it would be preferable for consideration to be nominal/symbolic.);

•  statement that the assignee accepts the assignment on its behalf (certified copy of the DOA signed by both parties. If filed under the Trademark Law Treaty ("TLT"), a certified legible scanned copy will suffice.).

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal);
  •  statement that the assignee accepts the assignment on its behalf.
     
    • certified copy of the DOA signed by both parties. If filed under the TLT, a certified legible scanned copy will suffice.

• Legal verification of a written assignment document of an application is required by:
  • notarization;
  • legalization

(Legalization can be by apostille if the country/countries where the parties sign is/are member(s) of the Hague Convention. Otherwise, legalization must be by the Costa Rican Consulate. If applied for under the TLT, a scanned clear copy will suffice.).

• Legal verification of a written assignment document of a registration is required by:
  • notarization;
  • legalization

(Legalization by apostille is available if the signatories are members of the Hague Convention. Otherwise, legalization must be by the Costa Rican Consul. If applied for under the TLT, a scanned clear copy will suffice.).

• An assignment of an application need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

• An assignment of a registration must be recorded to be effective.

Ownership is to be up-to-date for any enforcement proceedings.

B. Licensing

• Use of a mark that is the subject of an application can be licensed.

However, it will not be fully enforced unless the application matures into a registration. If the application does not mature into registration, the assignment will not be final; thus the new owner will not actually be recorded.

• Use of a registered mark can be licensed.

• In this jurisdiction, recordation of a registered trademark user (as opposed to recordation of a licensee) is the sole means of registering the rights of another to use the mark.

• A license of an application can be made for a portion of the territory covered by the application.

However, the license agreement can be enforced only if the mark achieves registration.

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded)

(The license will be fully effective only if the application matures into registration.).

• A license of an application can be sole (only one licensee and the owner).

(The license will be fully effective only if the application matures into registration.).

• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be exclusive (only one licensee, with the owner excluded).

(The license will be fully effective only if the application matures into registration.).

• A license of a registration can be sole (only one licensee and the owner).

(The license will be fully effective only if the application matures into registration.).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

(The license will be fully effective only if the application matures into registration.).

• Use by a related company of a mark that is the subject of an application need not be licensed.

• Use by a related company of a registered mark need not be licensed.

• A license of an application can be made with a time limitation.

 The licensor can stipulate the license agreement is indefinite or establish a specific term and conditions for extensions of such term.

• A license of a registration can be made with or without a time limitation.

The licensor can stipulate the license agreement is indefinite or establish a specific term and conditions for extensions of such term.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • quality control provisions;
  • signature by licensor;
  • signature by licensee;
  • express permission to sublicense, if appropriate;
  •  that the transaction be valued (Additionally, if not executed in Costa Rica, it requires legalization by apostille or consular depending on the country of execution. If filed under TLT, a scanned certified copy of the license deed will suffice.).

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • quality control provisions;
  • simple signature by licensor (see below for execution requirements);
  • simple signature by licensee (see below for execution requirements).

• Legal verification of a written agreement to license an application is required by:
  • notarization;
  • legalization

(If filed under TLT, a scanned certified copy of the license deed will suffice.).

• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

As noted earlier, if the application being licensed does not achieve registration, the agreement will not be enforceable, as the licensor will not actually be the owner of a trademark right.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• The license for a renewed registration need not be re-recorded,

 unless the original agreement includes a term that falls outside the new renewal date.

• Legal verification of a written agreement to license a registration is required by:
  • notarization;
  • legalization

(by apostille or consulate depending on the place of execution. If filed under TLT, a scanned certified copy of the license deed will suffice.).

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • power of attorney, without further formalities

(requires notarization (seal and signature of the Notary Public). A POA is to be filed by the resulting party of any corporate update. If multiple changes will be recorded at once, the suggestion is to draft the POA like this: XXXX (formerly known as and before that as) or XXXX (formerly known as XXXX by merger), or similar drafting to include all names changes or mergers. It must show current address in case the party involved is interested in updating it at the TMO at the time of recordal. If fully legible and without cuts, a scanned copy will suffice.);

• deed of assignment, legalized by the respective consulate/apostille

(If filed under the TLT, a scanned certified copy of the license deed will suffice.);

• certificate of proof of change of name, legalized by the respective consulate/apostille

(If filed under the TLT a scanned certified copy of the license deed will suffice.);

• certificate of merger, legalized by the respective consulate/apostille

(If filed under the TLT, a scanned certified copy of the license deed will suffice.).

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

A new POA bearing current address. If fully legible and without cuts, a scanned copy will suffice.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 With the Law of Movable Guarantees (Law N° 9246), it is now possible to pledge IP rights as collaterals for a loan or transaction. The requirements are as follows:
• The IP right has to be duly registered and valid;
• The parties have to sign a contract where it clearly states a description of the good and establishes and regulates the terms and conditions of the agreement;
• Register the guarantee an the System of Movable Guarantees.

VI. Registration

A. Requirements

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  •  Payment of legal stamps at the time of serving the electronic certificate.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  •  If a third party believes that the registration of a mark infringes its rights, the mark can be challenged only within the first four years of registration. However, a mark can always be challenged on the grounds that it has become generic and it can be challenged at any time after the fifth anniversary of its registration on the grounds of non-use.

• The territorial limit of registration is:

Costa Rican territory.

C. Term

• The initial term of a registration is:
  • 10 years.

Trade name registrations are indefinite provided that the registrant exists or the commercial establishment it identifies exists. Slogan registrations are indefinite provided that the mark(s) they promote is/are in force.

• The beginning of the term of a registration is calculated from:
  • the registration date.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 it provides notice to third parties that the product as branded is supported by a trademark registration.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • ®;
  •  MARCA REGISTRADA.

• The use of ® is legally recognized.

• The legal consequences of false or misleading marking are:

The owner of the mark can be sued before the Consumer Advocacy Bureau.

VII. Post-Registration

A. Use Requirements

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 five years from the registration date. If the mark is proven to be used at least two months prior the non-use action filing date, the trademark will not be cancelled.

• To satisfy the use requirement, the amount of use:
  • can be minimal.

• Use of the trademark must occur in:
  • this jurisdiction,

either for domestic use or exportation purposes.

• The consequences of a trademark's not being used are as follows:

The trademark can be contested under non-use grounds after the fifth year from the registration date.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  • any interested third party.

Only an interested party can file a non-use cancellation action. The Trademark Office will act ex officio only when a nullity action is filed (i.e., if a trademark was granted in violation of Article 7 and/or Article 8 of the Trademark Act).

• Non-use can be excused under the following circumstances:
  • import restrictions;
  • other government policies.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:
  • filed an application to register an identical or similar trademark;
  • registered an identical or similar trademark;
  • used an identical or similar trademark;
  • filed an action for cancellation of the trademark on the ground of non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

 Some variation is allowable prior to authorization for publication of the application if the variation is minimal and is authorized by the TMO. This comment is valid only for trademark applications, not registrations; moreover, the TMO reserves the right to reject a proposed amendment.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention

(the mark includes a badge or emblem of particular public interest; the mark is prohibited in this jurisdiction);

• the mark includes a badge or emblem of particular public interest;
• the mark is used in a misleading manner;
• the mark is prohibited in this jurisdiction;
• the application for or registration of the mark was made in bad faith.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is:

In Costa Rica, you may cancel a registration by a nullity action (within the fourth year from the registration date) or based on non-use (within the fifth year from the registration date). However, if the basis of the action is bad faith, the Paris Convention sets no specific deadline for filing an action based on such grounds.

• Anyone may bring a cancellation action

provided it establishes a motive for the mark to be cancelled (competitor has a refused mark similar to the one to be cancelled, etc.).

• Cancellation actions cannot be filed online

because a paper copy of the lawsuit must be provided to the TMO for service purposes along with any proof material filed by the plaintiff.

C. Renewal

• The following documentation is required for renewal:
  • power of attorney;

(only if the same local attorney is not filing the renewal. If accomplished by a different attorney, a fully executed and notarized Power of Attorney is required or if a change of address is to be recorded when filing the renewal. If fully legible and without cuts, a scanned copy will suffice.).

• The first renewal date of a registration is:
  • 10 years from the registration grant date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

 12 months.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

 An additional fee is to be paid.

• The penalty for late renewal is:
  • a fine.

An additional fee of USD 25 per trademark registration is to be paid if the renewal is filed during the grace period.

• Renewal can be effected online at the following URL:

 https://rpi.rnp.go.cr/wipofileindex/xhtml/sesion/index.xhtml However, it can only be done through an attorney or legal representative for nationals provided, additionally, that the user registers first and has a valid digital signature.

• At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

• Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is:

 There are "border measures," but there is still not a well-established proceeding to enforce this mechanism. The customs authority entity is called General Directorate of Customs (Dirección General de Aduanas).

• Recordation with the customs authority cannot be accomplished online. The following process must be followed:

 A writ must be filed before the General Directorate of Customs requesting protection of the mark(s) along with a certification of the mark to prove ownership by the party requesting such protection.

IX. Domain Names

A. Domain Names

• A domain name may not be protected as a trademark.

Trademarks using ".com" as part of them are not acceptable in Costa Rica.

• The following approved registrars can register a domain name in this jurisdiction:

all registrars.

• Availability of domain names in this jurisdiction can be searched through the following website(s):

https://nic.cr/

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.cr

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

However, the following must be provided:

1. Name of holder of administrative responsibility (owner of the domain name): the owner’s name; responsible person (administrative contact, full name of the individual or company, telephone number, and e-mail address); the domain name to be registered (please indicate sector).
2. Name of person/company with technical responsibility (one in charge of the service): the institution or company; the responsible person (technical contact, full name of the individual or company, telephone number and e-mail address); the domain name server (DNS): Primary and Secondary, full name on Internet (i.e.: ns.tse.go.cr); IP address for both servers (optional).

• Domain name registrations can be assigned.

• Domain name registrations can be licensed.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp);
  •  filing the corresponding complaint before the Academia Nacional de Ciencias, entity in charge of domain registrations in Costa Rica.

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:
  • World Intellectual Property Organization (WIPO);

• If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 A new filing is required soon to assure that a third party does not apply for the same domain name first.

• The application to register a domain name as a trademark will not be examined for conflicts with prior trademarks.

Trademarks and domain names are registered before different entities that are not related.

• An earlier-filed domain name registration cannot create rights effective against a later-filed trademark application filed by another.

Trademarks and domain names are registered before different entities that are not related.

• In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:

 Legislation and regulations governing both domain name disputes and domain name-trademark conflicts were enforced as of December 9, 2009 (Gazette No. 237). However, the legislation applies only to ".cr" domain names and does not apply to ".co.cr" domain names.

COSTA RICA TRADEMARK OPPOSITION PROCEDURE

I. Availability

A. Pre- or Post-Grant

• Opposition is available.

• Opposition is conducted pre-grant.

• Opposition is available for either all or part of the goods/services covered by a trademark application or registration. The possibility of filing an opposition against only part of the goods/services covered by a trademark application is not expressly mentioned in the Law on Trademarks and Other Distinctive Signs or its Regulations, but it is accepted in practice.
  
  Regardless, the opposed application as a whole will be suspended from registration until a final decision is reached. The applicant may file for a divisional application to separate the non-conflicting goods/services. This divisional application will be subject to review by the Industrial Property Registry, which may suspend the new divisional application in case it deems that the conflict persists.

B. International Registrations

• This jurisdiction is expected to become a member of the Madrid Agreement and/or the Madrid Protocol: Under Article 15.1.6(e) of CAFTA-DR (Dominican Republic-Central America FTA with the United States of America), Costa Rica must undertake to make all reasonable efforts to ratify or accede to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989). There is no set deadline.

C. Collective Marks and Certification Marks

• Collective marks are registrable.

• Opposition to an application for a collective mark is available.

• Opposition to a registration for a collective mark is not available.

• Certification marks are registrable.

• Opposition to an application for a certification mark is available.

• Opposition to a registration for a certification mark is not available.

II. Effect on Registration Rights

A. Effect on Registration Rights

• An opposition (even if unsuccessful or later withdrawn) will delay the grant of full registration rights to the applicant.

III. Grounds

A. Absolute, Relative and Other Grounds

• The following grounds are admissible for opposition:

• relative grounds (based on conflicting prior application(s)/registration(s) or based on conflicting prior rights in unregistered marks);

• absolute grounds (based on grounds other than proprietary rights, e.g., not a proper trademark, non-distinctiveness, descriptiveness or deceptiveness);

• bad faith issues (e.g., wrongful claim to ownership or lack of intention to use);

• conflicting copyright or design rights;

• rights under Article 6bis of the Paris Convention or the equivalent thereto (notorious or well-known marks);

• rights under Article 6septies of the Paris Convention or the equivalent thereto (registration in the name of an agent or other representative of the proprietor of the mark);

• rights in the name of a local citizen or resident;

• rights in the name of a foreign citizen;

• rights under Article 8 of the Paris Convention or the equivalent thereto (trade names);

• rights under Article 6ter of the Paris Convention or the equivalent thereto (prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations);

• offenses against public policy or principles of morality;

• offenses against or ridicule of persons, ideas, religions or symbols of national or international entities;

• the mark is a reproduction of coins or legal tender of any country, negotiable titles or any other mercantile documents, seals or stamps;

• the mark is a reproduction or imitation, in whole or in part, of official signs of guarantee or control adopted by any State or public entity, without proper authorization;

• the mark reproduces or includes medals, awards, diplomas or other elements that may suggest accolades with respect to the goods/services, unless such accolades have indeed been granted to the applicant and sufficient proof is submitted at the time of applying for the registration;

• the mark consists of the name of a protected vegetable variety in Costa Rica or in a foreign country with which an agreement as to the protection of vegetable varieties has been reached.

B. First to Use or First to File

• In an opposition involving conflicting trademark applications or registrations, an earlier use date prevails over a later filing date (i.e., this is a first-to-use jurisdiction).

• Circumstances under which earlier use is considered sufficient to prevail over a later filing date are: A person who proves to have bona fide prior use from the earliest date has the right to be granted the registration, as long as said use has lasted for at least three months or may claim an earlier priority date. A prior user is required to file a defensive application for registration of the mark no later than 15 days after the filing date of the opposition. Both applications will be decided upon jointly.

IV. Forum

A. Forum

• The opposition authority is part of the Trademarks Registry/Office.

V. Costs and Fees

A. To Initiate

• The government/official fees for filing an opposition based on a single prior registration are: USD 25.

• The approximate range of attorney fees for filing an opposition based on a single prior registration is: As of February 2019, the minimum regulated attorney fee for filing an opposition is CRC 242,000 + 13% VAT (approx. USD 477).

• A listing of government/official fees for oppositions can be found online at: http://www.rnpdigital.com/propiedad_industrial/propiedad_industrial_aranceles.htm.

• The website listing of government/official fees for oppositions is presented in the following language(s): Spanish.

B. Monetary Bonds or Surety from Foreign Opponent

• There are no provisions requiring monetary bonds or other surety from a foreign opponent.

VI. Burden of Proof

A. Burden of Proof

• The burden of proof is neutral; i.e., both parties must prove any grounds, facts, allegations and defenses on which they rely in the opposition.

VII. Substantive Examination

A. Substantive Examination

• The trademark registration process includes an official, substantive examination.

• This system includes an official, substantive examination of an application on:

• both absolute and relative grounds.

• The official, substantive examination of an application is conducted before publication for opposition.

• Examination of an application on relative grounds includes an official search for conflicting prior applications and registrations, and the examiner has the right of objection and refusal based on cited marks.

• Any official, substantive examination report is not open to public inspection before the end of the official opposition term.

• Opposition is not considered part of the official, substantive examination and is decided in a separate proceeding.

• An official, substantive examination will always be conducted after an opposition proceeding has been concluded or after an opposition has been withdrawn.

VIII. Standing and Other Opponent Issues

A. Valid Opponent/"Person" and/or "Interested Person" Defined

• Standing to oppose extends to:

• any person. Legal interest is not required. While legal interest is not a statutory requirement, in practice the Trademarks Registry/Office might require an opponent to provide a statement or proof of interest. In fact, publication notices include the language, "Third parties interested in defending their rights are called to act before this Registry."

• For purposes of standing, "person" is defined as:

• both natural and juridical persons.

• For purposes of standing, "interested person" is defined as:
  • someone who believes he will be damaged by the registration;
  • someone who owns an earlier pending application to register a conflicting trademark;
  • someone who owns an earlier conflicting trademark registration;
  • someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;
  • someone who owns rights in a conflicting trademark that were acquired through use; In this case the party that files the opposition is required to file a trademark application within two weeks after filing the opposition. If prior use is proven and the trademark application is propperly filed then the trademarks will undergo the ordinary substantial examiniation.
  • someone who is a licensee of any conflicting trademark or other intellectual property right;
  • someone who is of the opinion that the mark is not registrable; However, there must be an interest, whether it may be merely based on moral issues or most commonly in the case of competitors that feel that such a trademark's registration might bring about some sort of damage to their rights.

B. On Basis of Grounds

• Where opposition is based on relative grounds (i.e., a prior registered or unregistered right), then:

• the owner or a licensee of the prior right can use that right as a ground of opposition.

• Relevant prior rights must be locally established rights (e.g., local national registration rights, applicable regional rights or relevant International Registration extensions, or local rights in unregistered marks). However, rights need not be locally established for owners of marks that are deemed famous by the pertinent sector of the public in any member state of the Paris Convention. In practice, the Industrial Property Registry will require filing of a successful enforcement decision recognizing this circumstance issued by the relevant authority, although other kinds of evidence may be submitted.

C. Assignees and Licensees

• An unregistered assignee of a relevant prior right may be a valid opponent.

• A registered licensee of a relevant prior right may be a valid opponent.

• An unregistered licensee of a relevant prior right may be a valid opponent.

D. Concealing Identity of Opponent

• An opposition filed in the name of the legal representative for purposes of concealing the identity of the principal is considered validly filed if the opponent meets all the other criteria.

E. Joint Opponents

• Two or more opponents may jointly file a single opposition.

• A parent company and its trading subsidiary may be indicated together as opponents in a single joint opposition.

• Two otherwise-unrelated companies may file a single joint opposition.

F. Foreign Opponent

• Oppositions cannot be filed from abroad; they must be filed by a local agent/attorney.

G. Opponent's Prior Rights and Use

• If an opponent relies on a prior registration, the applicant or the opposition authority:

• cannot require the opponent to provide proof of use of the earlier-registered mark. An applicant must file a separate cancellation action against the registration that serves as basis for the opposition; the opponent will have to provide proof of use as a defense.

IX. Term and Extension

A. Opposition Term: National Applications/Registrations

• The system provides a fixed initial term within which an opposition may be filed.

• For national applications, the initial opposition term begins:

• on the date that the details of the application are published for opposition in the local official IP bulletin, journal or gazette. This publication is called: La Gaceta. It is exclusively published online at: https://www.imprentanacional.go.cr/.

• For national applications, the initial opposition term expires the following number of days or months after the date on which the opposition term begins (as mentioned above): two months from publication in the Gazette. For example, if the application is published on January 15, 2019, the opposition term expires on March 15, 2019.

C. Deadline Not on Normal Business Day

• An opposition deadline that does not fall on a normal business day or that falls on a local public holiday or other officially excluded days may be met by action on the next business day.

• Normal business days of the week are:

• Monday through Friday.

D. Extensions

• The opposition term is not extendable.

X. Filing Requirements

A. Minimum Filing Requirements

• The minimum filing requirements to initiate an opposition (i.e., to obtain a filing date) are:

• opposition form indicating the following information: the factual and legal basis for opposition.

• official fee (The USD 25 fee must be paid directly at the bank "Banco de Costa Rica." The payment receipt must be submitted with the opposition.).

• The following additional actions or documentation is required to complete the required filing formalities (i.e., to shift the burden of action to the registration applicant) and will be accepted after the opposition deadline has expired:

• power of attorney (Foreign opponents are required to act through a locally authorized representative; this requirement does not apply to local parties.);

• evidence, as follows: within 30 calendar days from the filing date of the opposition. The Trademark Office accepts only original, notarized, authentic or, if issued abroad, legalized or apostilled documents as evidence. Simple copies, reproductions or references to Internet websites are not deemed acceptable.

B. Payment of Official Fees

• Opposition fees can be paid using the following payment modes:

• Direct payment at the bank Banco de Costa Rica. The payment receipt issued by the bank must be filed with the opposition. Online payments can also be completed by account holders of Banco de Costa Rica.

C. Public Inspection of Documents

• Documentation submitted in an opposition is open to public inspection upon receipt or after a short delay.

• Requests can be made for specific opposition documentation to be treated as confidential and not laid open to the public. Under Article 9 of the "Ley de Información No-Divulgada" (Law for Undisclosed Information) (Law No. 7975 of January 4, 2000), during the course of any judicial or administrative proceeding, if a party must disclose "undisclosed information" -- the terminology adopted in the Law to refer to confidential documents or information -- the opposition authority must adopt all measures required to make sure that the documents are not open to the public. The parties may not reveal or use this information for their own means. In practice, this provision is rarely applied, and the Industrial Property Registry does not have formal guidelines for treating certain documentation as confidential.

D. Additional Grounds

• Additional grounds of opposition may not be introduced into an opposition after the opposition has been filed. Additional opposition grounds and evidence may be submitted during appeal, after the Trademark Office issues its initial decision. The appeal authority routinely grants the parties a 15-day term to file new arguments and evidence, once it gains jurisdiction over a matter. While not established under the Trademark Law, the appeal authority might restrict this possibility to new evidence or evidence that did not exist at the time of filing of the opposition.

E. Representation

• The opponent is required to act through a locally authorized representative during the entire proceeding if the opponent is foreign; there is no such requirement for local opponents.

F. Language and Translations

• Opposition documents must be submitted in the following local official language(s): Spanish.

• Opposition documents may be submitted in a language (or languages) other than the one(s) listed above, as follows: Opposition documents may be submitted in a language other than Spanish, but they must be accompanied by a translation into Spanish.

• When opposition documents are submitted in a language (or languages) other than the local official language(s), translations are required to be submitted at or by the following time: If the original document written in a language other than Spanish was submitted at the same time as the filing of the opposition, there is a one-month deadline to submit the translation. If the document was filed within the one-month deadline after the opposition without the accompanying translation, the Industrial Property Registry will invite the party to file the translation within 15 days.

XI. Post-Filing Stages and Procedures

A. Sequence and General Considerations

• Depending on the jurisdiction, opposition proceedings generally involve a number of stages between the filing of the opposition and the official decision or judgment. Typically, the post-filing stages will require either that alternating actions be taken by one party after the other in consecutive steps or that actions be taken concurrently by both parties.

• In this jurisdiction, opposition proceedings require alternating action by one party after the other. At the most basic level, the sequence of actions by the parties is the following: (1) filing of opposition; (2) review of formalities by Trademark Office; (3) response by applicant; (4) final decision; (5) appeal by either party; (6) grant by Appeal Board of a 15-day term to file arguments; (7) response by the other party; (8) appeal decision.

• A full discussion of the opposition stages is beyond the scope of this publication. Please consult a local attorney for specifics about the sequence of stages and the duration of and requirements for each. The following is a non-exhaustive list of issues to consider when consulting your local counsel:

• The general sequence of stages from the filing of the opposition until the official judgment or decision.

• When each party must submit documentation/evidence.

• What documentation/evidence is required.

• The approximate duration of particular phases as well as the approximate length of the entire proceeding.

• Whether either party can request extensions.

• If extensions can be requested, when, for what reasons and for what length of time.

• If and when the parties (or their representatives) are required to appear in person before the opposition authority, or whether written statements may be submitted.

• The consequences of either party's not performing its responsibilities during any stage of the opposition.

• The official fees or other expenses, including local attorney fees, that will apply to an opposition procedure.

B. Length of Opposition Procedure

• The approximate length of time from the filing of an opposition to an official decision concluding the opposition procedure is: Generally, a decision is reached by the Industrial Property Registry in approximately 8 to 12 months. If the decision is appealed, the final decision by the Registry superior will take approximately an additional 12 to 18 months.

C. Monetary Awards

• The opposition authority has no power to make formal monetary awards (costs, official or attorney fees, or other compensation) to the parties.

D. Withdrawal of Oppositions or Applications

• Withdrawal of an opposition without the agreement of the applicant/registrant to the terms of the withdrawal does not terminate the proceedings. There are no provisions in the Costa Rican Trademark Law pertaining explicitly to the withdrawal of an opposition. Depending on the stage of the proceeding, the opposition authority will determine whether or not to terminate the proceeding or issue a decision. An opposition may bring to the attention of the opposition authority substantive questions that it had not considered during initial examination of the application, which may cause the application to be ultimately rejected.

• Withdrawal of an opposition without the agreement of the applicant/registrant to the terms of the withdrawal does not have any consequences with regard to the award of costs.

• Withdrawal of an opposed application with or without the agreement of the opponent to the terms of the withdrawal automatically terminates the proceedings.

• Withdrawal of an opposed application without the agreement of the opponent to the terms of the withdrawal does not have any consequences with regard to the award of costs.

• Withdrawal of an opposition or of an opposed application outside this jurisdiction (with or without the agreement of the other party to the terms of the withdrawal) has no effect on opposition or other proceedings in this jurisdiction.

• If the opponent has withdrawn the opposition, the opposition authority can still reject the opposed application on any of the opposition grounds. Once an opposition is filed, even if it is withdrawn, the opposition authority will make a determination regardless of the behavior of the parties. An opposition may bring to the attention of the opposition authority substantive questions that it had not considered during initial examination of the application, which may cause the application to be ultimately rejected.

• A formal basis is not required for withdrawal of an opposition.

• The limitation or restriction of the applicant's goods/services, with or without a written settlement agreement, is rarely a basis for withdrawal of the opposition.

• The terms of a settlement agreement need not be disclosed to the opposition authority.

• The opposition authority need not approve any settlement reached and/or formal withdrawal of the opposition. The opposition authority has no faculty to approve or disapprove a settlement reached by the parties, or to restrict the parties' ability to withdraw the opposition. However, the parties' agreement (e.g., a "Coexistence Agreement" or a "Letter of Consent") is not binding upon the opposition authority, which will still issue a decision based on the facts of the matter as it perceives them.

XII. Appeals

A. Availability/Deadline

• An opposition decision may be appealed. The majority of cases usually are appealed by the losing party due to the fact that no monetary awards are available and there is no official fee payable upon appeal.

• The following party or parties may file an appeal: Only the party that lost (in whole or partially) may appeal.

• The deadline for filing an appeal is: The deadline to file an appeal is extremely short -- only five working days from the date on which the decision is notified to the party.

B. Forum

• There is more than one appeal authority, the names of which are: There are two main paths by which to pursue an appeal or review of a decision. The ordinary route is to file an appeal before the "Tribunal Registral Administrativo," which translates into English as "Administrative Registral Tribunal." The vast majority of appeals are handled by this Tribunal. Alternatively, the party may choose to file an administrative suit directly before the ordinary courts, which is considerably more costly and lengthy. An appeal before the Tribunal Registral Administrativo is not a prerequisite for filing a suit.

• The following appeal authority/authorities is/are part of the Trademarks Registry/Office: The Tribunal Registral Administrativo is the superior within the Industrial Property Registry's hierarchical structure.

• The following appeal authority/authorities is/are independent of the Trademarks Registry/Office: ordinary courts.

• The reasons for choosing one appeal authority over the other are: The opposition procedure before the Industrial Property Registry and the Tribunal Registral Administrativo has limitations as to the kinds of evidence that can be submitted (see Section X. Filing Requirements and, specifically, Section X.F. Language and Translations), and monetary awards are not available; however, it is less costly and faster than an administrative suit.

C. Cost/Monetary Bonds or Surety

• The government/official fees for filing an appeal are: None.

• The approximate range of attorney fees for filing an appeal is: As of February 2019, the minimum regulated attorney fee for filing or responding to an appeal is CRC 242,000 + 13% VAT (approx. USD 477).

• The government/official fees for prosecuting an appeal to conclusion are: None.

• The approximate range of attorney fees for prosecuting an appeal to conclusion is: Not regulated, other than for filing.

• Monetary bonds or other surety is not required of foreign appellants.

D. Higher Appeals: Availability/Monetary Bonds or Surety

• An appeal decision is not final; higher appeals are possible and can be made to: As with the initial decision by the Industrial Property Registry, an appeal decision may be challenged before the ordinary courts in an administrative suit.

• On higher appeal, there are no provisions requiring monetary bonds or other surety from a foreign appellant.

E. Other Circumstances

• Important circumstances of appeal that are not mentioned above include: In exceptional cases, the parties may request that the Industrial Property Registry's superior hear oral arguments; but, generally, the procedure is entirely written.

XIII. Other Issues

A. Subsequent Infringement Proceedings

• In subsequent equivalent infringement proceedings, an opposition decision is not binding on the court.

B. Local Requirements/Perspectives

• Particular local requirements that are not covered above and that are not common in other jurisdictions or familiar to foreign practitioners include: The procedure is exclusively written. All evidence that is submitted must consist of original, notarized, authentic or, if issued abroad, legalized or apostilled documents. Simple copies, reproductions or references to Internet websites are not deemed acceptable unless notarized. Notarized affidavits may be submitted by the interested party to incorporate into the record for the consideration of the opposition authority. It is also important for opponents to comply strictly with the rules pertaining to timely filing and execution of powers of attorney.

C. Anticipated Revisions of the Law

• Important changes in relevant law are not anticipated in the near future.

XIV. Alternatives

A. Cancellation

• There are procedures available whereby third parties can apply to cancel or partially cancel a registration (whether or not an opposition has been filed).

• These procedures are known (or translate into English) as:

• cancellation;

• nullity.

• The grounds to initiate a cancellation are:

• the mark is descriptive;

• the mark is misleading and/or deceptive;

• the mark lacks distinctiveness;

• the mark is against public policy or principles of morality;

• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

• the mark includes a badge or emblem of particular public interest;

• the application for or registration of the mark was made in bad faith;

• there is an earlier application or registered mark;

• the mark is covered by a copyright;

• the mark is notorious or well known (Article 6bis of the Paris Convention);

• the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);

• the mark is a trade or business name;

• lack of use;

• generalization.

• The grounds to initiate a nullity are:

• the mark is descriptive;

• the mark is misleading and/or deceptive;

• the mark lacks distinctiveness;

• the mark consists of a geographical indication;

• the mark is functional;

• the mark is against public policy or principles of morality;

• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

• the mark includes a badge or emblem of particular public interest;

• the mark is used in a misleading and/or deceptive manner;

• the mark is prohibited in this jurisdiction;

• the application for or registration of the mark was made in bad faith;

• there is an earlier application or registered mark;

• there are earlier use-based rights in an unregistered mark;

• the mark is covered by a copyright;

• the mark is notorious or well known (Article 6bis of the Paris Convention);

• the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);

• offenses against or ridicule of persons, ideas, religions or symbols of national or international entities;

• the mark is a reproduction of coins or legal tender of any country, negotiable titles or any other mercantile documents, seals or stamps;

• the mark is a reproduction or imitation, in whole or in part, of official signs of guarantee or control adopted by any State or public entity, without proper authorization;

• the mark reproduces or includes medals, awards, diplomas or other elements that may suggest accolades with respect to the goods/services, unless such accolades have indeed been granted to the applicant and sufficient proof is submitted at the time of applying for the registration;

• the mark consists of the name of a protected vegetable variety in Costa Rica or in a foreign country with which an agreement as to the protection of vegetable varieties has been reached.

• To compare the grounds for the above procedures to the grounds for opposition, please see Section III. Grounds: A. Absolute, Relative and Other Grounds

• The burden of proof is on both parties to prove the allegations and defenses on which they rely in the cancellation action.

• The burden of proof in an opposition is the same as it is for a cancellation.

• Cancellation or equivalent proceedings can in some circumstances be preferable to or pursued instead of opposition proceedings because:

• the opposition term has lapsed;

• the fixed term to file an opposition (two months) is not sufficient to obtain all the needed evidence.

B. Observations and Letters of Protest

• There are no procedures for official consideration of third-party objections to grant (e.g., observations, letters of protest, etc.).

If you would like to know the trademark registration process of Cuba ? Click on here!

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