In Costa Rica trade marks are mainly governed by the Trademark and Other Distinctive Signs Law (Law 7978). Copyrights are mainly governed by the Copyright and related Rights Law (Law 6683). Furthermore, the Law on Procedures for Enforcement of Intellectual Property Rights (Law No. 8039) applies to trade mark and copyright infringement cases, as well as the Competition and Consumer Defense Law (Law No. 7472) for unfair competition cases that involve trade marks.

Court Decisions

Trade mark rights are not governed by case law. Costa Rican courts are allowed to interpret the legal provisions regarding trade marks when deciding the cases before them. The only binding court decisions are those that come from the Constitutional Chamber of the Supreme Court.

Common law trade marks and/or copyrights do not apply in Costa Rica.

In Costa Rica treaties and conventions have a hierarchy above regular law.

Costa Rica is a member of the following trade mark treaties that include trade mark provisions: 

• Paris Convention;
• Nice Agreement;
• Trademark Law Treaty (TLT);
• TRIPS Agreement;
• WIPO Performances and Phonograms Treaty;
• WIPO Copyright Treaty (WCT);
• Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite;
• Berne Convention for the Protection of Literary and Artistic Works; and
• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations.

Costa Rica is a member of the Paris Convention, the Nice Agreement, the Trademark Law Treaty (TLT), the TRIPS Agreement and the Berne Convention that include provisions on trade marks and copyrights.

The types of distinctive signs under the Costa Rican legal system are as follows: 

• trade marks; 
• trade names; 
• slogans;
• special designs; and
• three-dimensional trademarks.

Additionally, there are: certification trade marks, collective trade marks, denomination of origin and geographical indication.

Although use is important in Costa Rica, distinctive signs must be properly registered to be fully protected. Common law trade mark rights do not apply in Costa Rica.

Costa Rica does not have specific marks that are protected by statute in a way different from ordinary marks. The only special protection according to Costa Rican law is regarding famous or notorious trade marks.

If the requirements for trade mark registration are met, industrial designs may be admissible for trade mark protection.

A trade mark can be any sign or combination of signs capable of distinguishing goods or services, especially words or groups of words (including personal names), letters, numbers, figurative elements, figures, monograms, portraits, labels, coats of arms, prints, vignettes, borders, lines or stripes, combinations, and arrangements of colours, as well as any other distinctive feature. Likewise, they may consist of the form, presentation or packaging of the products, their containers, or wrappings or of the means or premises of sale of the products or services concerned.

Costa Rica, as part of the Nice Agreement, applies its classification of goods and services.

There are also certain government symbols that have special protection, such as flags, emblems, national symbols. Furthermore, as per international treaties, other specific prohibitions can apply, for instance in respect to signs such as those of the Red Cross or the Olympic Games.

Costa Rica does recognise and protect marks that are famous outside the country but are not yet registered or in use locally. It is possible to validly refuse a trade mark in Costa Rica taking into consideration foreign well-known marks.

Distinctive character is required to apply for trade mark protection, in addition to the formal requirements of a trade mark application. Use is important in Costa Rica; however, distinctive signs must be properly registered to be fully protected. Distinctive aptitude is acquired with respect to the product or service to which it is applied. This means that the trade mark is not generic, descriptive or misleading of the product or service. The secondary meaning does not apply in Costa Rica. A brand can lose its distinctive character when it has become a generic name, as an indicator of the business origin of the product or service to which it is applied, in commercial media and in the public domain.

The registration of a trade mark grants its owner the right of exclusivity and enforceable rights of protection against other identical or similar signs to the point of confusion. The right of priority is applicable within the Registry and prior use rights can be claimed, even for unregistered trade marks, if actual prior use is proven. These rights are described in Costa Rican trade mark law and local jurisprudence. These rights persist during the term of the trade mark.

Costa Rica is also a contracting party of the WIPO Copyright Treaty, so Article 11 is applicable.

A trade mark is considered in use when it has been placed on the market, in the quantity and form that normally corresponds, considering the size of the market, the nature of the products and the modalities under which they are marketed. If applicable, also when the products or services have been exported or provided abroad from Costa Rica.

According to Costa Rican legislation, the use of this type of symbol is not mandatory, though if owners decide to use them, the authorised symbol is ® or the phrase “Registered Trademark”.

Trade marks can also be protected as copyrights. According to Costa Rican legislation, one of the limitations to register a trade mark is if it infringes a third-party copyright.

According to the Copyright and Copyright Related Rights Law (No. 6683), the following are eligible for copyright protection: all productions in the literary, scientific and artistic fields, whatever the form of expression, such as books, pamphlets, letters and other writings; in addition, computer programs, including their successive versions and derived programs; also, lectures, addresses, sermons and other works of a similar nature, as well as dramatic musical works, choreographic works and pantomimes; musical compositions, whether or not accompanied by music, and cinematographic works, to which are assimilated works expressed by a process analogous to cinematography, works of drawing, painting, architecture, sculpture, engraving and lithography, photographic works and works expressed by a process analogous to photography; works of applied art, such as illustrations, maps, plans, sketches and plastic works relating to geography, topography, architecture or science; collections of works such as encyclopaedias and anthologies which, by reason of the selection or arrangement of the subject matter, constitute intellectual creations; compilations of data or other material, in machine-readable or other form, which, by reason of the selection or arrangement of their contents, constitute creations of an intellectual nature; and derivative works such as adaptations, translations, musical arrangements and other transformations of original works which, while not in the public domain, have been authorised by their authors. If the requirements for copyright registration are met, industrial designs may be admissible for copyright protection.

There is no examination in the registration process, if the originality element is met. Copyright applications are essentially a deposit procedure, with formalities being the only elements examined.

Originality is not regulated in the normative bodies, as there are different legal conceptions, which is why it is reserved for jurisprudence. It is a prerequisite for access to protection, in relation to the commitment and creativity contributed to the work. It also requires the individualised expression of the author, as well as the author's personality. Originality is not linked or subordinated to the genre, extent or artistic merit, or purpose of the work, as these are irrelevant to copyright.

A work may meet the requirement of originality, even if it expresses a subject matter that was previously known or disclosed. The threshold of originality is exceeded when the creative capacity, reflected in the work, goes beyond the common field, so that the work becomes worthy of protection. The same applies to the originality of the title of the work, when it cannot be confused with another work of the same genre, another previously published work, and another work within the common field.

In principle, authorship is vested in the natural person, who carries out the intellectual creation; however, it is important to remember that such work can be carried out individually or in collaboration. On the other hand, ownership must always be related to the economic right. From authorship, the natural person, the creator, acquires the original ownership of his work. The commissioner will be the holder of the economic rights over the work, but the authors will retain their moral rights over it; likewise, when the author is a salaried employee, the holder of the economic rights will be the employer. There have not been cases of work that was not created by a human in Costa Rica at the present time; if the law does not contemplate it, these circumstances would be ruled by jurisprudence or on a case-by-case basis.

The publisher shall exercise all the rights and be subject to all the obligations of the author. Where the latter decides to reveal their identity, they shall automatically regain the exercise of their rights. Acts lawfully performed by the publisher shall continue to be valid and to produce effects after the disclosure of the author; the publisher shall also be liable for any unlawful acts he may have committed. The protection shall be 70 years from publication. The rights shall be registered in the name of the publisher unless the pseudonym is registered. If the work is posthumous, the rights shall be registered in the name of the successors in title of the author, after that quality has been proved. The phonogram shall be registered in the name of the producer. The radio or television programme shall be registered in the name of the broadcasting organisation.

A work produced by two or more authors, acting in common, and in which the participation of each of them cannot be dissociated, constitutes an indivisible whole. The authors of a work of joint authorship are co-owners of the copyright in the work. However, individual exploits or percentages may be established in agreement with all the authors.

These rights consist of faculties that demand an initiative, or decision, on the part of the author (such as disclosure, repentance or retraction, and access to the work) and seek respect for the work, in the face of unlawful conduct by third parties (claiming authorship and integrity of the work), according to the Costa Rican Copyright Law. It applies to the transmission mortis causa, in principle, of the economic right, or the exercise of the moral right. With regard to the moral right, however, there is no change of ownership with the death of the author. However, the right to withdraw the work from circulation, with prior compensation to the injured parties, is extinguished with the death of the author.

In Costa Rica, independently of the economic rights, even after their transmission, the author retains a very personal, inalienable, unrenounceable and perpetual moral right over the work. It includes the right to keep the work unpublished, to defer, by will, its publication and reproduction for a period of up to 50 years after their death, to claim authorship of the work, to oppose any deformation, mutilation or other modification of the work or any attack on it that would be prejudicial to their honour or reputation, and to withdraw the work from circulation, subject to compensation to those harmed by their action.

The various forms of use are independent of each other, so that authorisation to fix the work or production does not induce authorisation to perform or broadcast it, and vice versa.

Copyright shall be permanent during a copyright owner's lifetime. After their death, they shall be enjoyed for a period of 70 years by those who have legitimately acquired them. In cases of a deceased estate, there shall be no legal succession in favour of any State entity, so that the ownership of copyright shall immediately pass into the public domain.

According to Costa Rican legislation, the use of symbols as notice of copyright ownership is not mandatory.

The Association of Composers and Musical Authors of Costa Rica, a Collective Management Organisation, was created by musical authors and composers with the aim of collecting and distributing royalties. The Costa Rican Performers' Association, known by its acronym AIE Costa Rica, is a collective management organisation that manages the related rights held by both Costa Rican and foreign musical performers, represented by means of reciprocity contracts signed with other similar organisations. Both are duly authorised by the Copyrights Office and are governed by both the Law of Associations and the Law of Copyrights and Related Rights No. 6683.

Copyrights are protected from their conception. However, it is recommended to register the copyright to have complete protection and enforceable exclusive rights in Costa Rica.

Costa Rica has a Copyright Office that is part of the Costa Rican Public Registry.

Individuals, legal entities, trade bodies and foreign applicants can register a copyright. A notarised power of attorney granted by the applicant is required.

Name of the author with their full qualifications must be provided. If the application is submitted through a representative, he/she must provide a suitable document accrediting him/her as such and indicate the name and qualities of the represented party. If the Power of Attorney is granted abroad, it may be formalised in accordance with the domestic law of the country where it is granted and must be authenticated. If the application is submitted by a publisher, printer, translator, etc., indicate the full name and qualifications of the author and submit the appropriate document through which the right was acquired. Indicate the title of the work to be registered, indicate the genre (literary or artistic), provide a brief description of the content of the work (three to five lines). Indicate whether the work is unpublished or published. If applicable, indicate whether the work is collective or collaborative.

The filing fee is USD5.

If incorrect information is provided when registering a copyright, the registration can be annulled.

This annulment may be requested by any interested third party to the Copyright Office or it can be filed directly by this Office.

This Office will decide said issues.

At any time, the registration may be amended to correct any errors.

Lack of originality or formality issues may be the content of a refusal.

If the Copyright Office objects to the application, they will grant a 15- or 30-day term to file a response. In such response, the applicant must try to persuade the Copyright Office that the application can obtain the correspondent protection.

The law provides for this, but it is currently difficult to enforce copyright against previous fraudulent registrations, and the criteria used by the Trademark Office is not uniform.

Trade marks in Costa Rica must be registered to have complete protection and enforceable exclusive rights. Very limited rights are acquired by using a trade mark.

Rights can be claimed, even for unregistered trade marks, if actual prior use is proven, and the registration of a trade mark grants its owner the right of exclusivity and enforceable rights of protection against other identical or similar signs to the point of confusion.

Notwithstanding the above, an opposition based on prior use of the mark may be filed. Though they shall be declared inadmissible if the opponent does not prove that he has not applied to the Industrial Property Registry for registration of the used mark. The Registry will accumulate the files relating to the application for registration that is the object of the opposition and the application for registration of the used trade mark, to resolve them jointly.

The opponent must file the application within 15 days from the filing of the application. When the prior use of the opposing party's mark is proven and the requirements set forth in this law for registration of the mark have been complied with, registration shall be granted. Registration may also be granted for the mark against which it is susceptible of creating confusion; in such case, the Register may limit or reduce the list of goods or services for which each of the marks may be used, and may establish other conditions relating to its use, when necessary to avoid risks of confusion.

Secondary meaning does not apply in Costa Rica.

Costa Rica has a Trademark Office that is part of the Costa Rican Public Registry.

Searches

Although it is not mandatory, proceeding with a trade mark search before filing an application is always recommended. It is important to take into consideration that design searches are not available in Costa Rica. According to the Trademark Office, this type of search may be implemented by 2023.

Official searches are available, though normally the searches are made manually by the law firm’s personnel directly in the Registry's database, as the official searches are charged, they are not binding for a possible evaluation of an application and no opinion is granted by the Trademark Office regarding the results.

Series trade mark registrations are not allowed in Costa Rica.

The term of protection in Costa Rica is ten years.

Trade marks may be renewed indefinitely for successive periods of ten years, counted from the date of the preceding expiration. A renewal can be submitted one year before the expiration date, there is also a six-month grace period afterward. If a registration expires or is not submitted within the six-month grace period, it cannot be reactivated; the only option to maintain protection would be to immediately reapply for the registration and obtain it.

According to Costa Rican legislation, the owner of a trade mark may request, at any time, that the registration be amended to correct any error. The correction will not be admitted if it implies an essential change in the mark or an extension of the list of goods or services covered by the registration.

The owner of a registration may request, at any time, that the list of goods or services covered by the registration be reduced or limited. The reduction or limitation shall only be registered upon presentation of a written declaration of the third party, with the signature certified by a notary public, by virtue of which he agrees to reduce or limit the list.

Requirements for trade mark application:

• Name and address of the applicant. Place of incorporation, when it is a legal entity.
• The trade mark whose registration is requested.
• A reproduction of the mark, in the case of word marks with special graphics, shape or colour, or figurative, mixed or three-dimensional marks with or without colour.
• A translation of the mark, when it is constituted by some denominative element with meaning in a language other than Spanish.
• A list of the goods or services for which the mark is or will be used, grouped by classes according to the Nice International Classification.

Both single class, as well as multi-class applications are allowed.

The filing fee is USD50.

Individuals, legal entities, trade bodies and foreign applicants can register a trade mark. A notarised power of attorney granted by the applicant is required.

No evidence of use must be filed with a trade mark application. Though if a registered trade mark is not in use for five consecutive years, any third party can request its cancellation.

A trade mark is considered in use when the products or services that it protects have been placed on the market with that trade mark, in the quantity and in the manner that normally corresponds, taking into account the dimension of the market, the nature of the products and the modalities under which they are commercialised.

A trade mark is also considered in use, regarding exported products or services provided abroad from Costa Rica.

The only prior rights that could be raised in Costa Rica are:

• Claiming priority based on an application filed in a country that is part of the Paris Convention.
• If the trade mark has been declared famous and/or notorious.

No other prior rights are considered when examining an application. Costa Rica applies a very strict criteria based on the fact that each application is independent and must be analysed independently.

In general, Letters of Consent and/or Coexistence Agreements are not authorised, and their use is extremely restrictive. The exception is when both companies belong to the same economic group and such relationship can be demonstrated by means of a capital stock certification where it is determined that both are related.

Third parties have the right to participate during the registration procedures by filing oppositions. Any interested party may file an opposition against the registration of a trade mark within a period of two months from the first publication of the notice announcing the application.

After the application is filed it undergoes a substantive examination. Potential refusals can include: 1) failure to comply with filing formalities or 2) inherent un-registrability of the mark or 3) conflict with prior trade mark rights. If no objections are raised the application is published in the Official Gazette. Costa Rican law grants a term of two months for third parties to oppose and if no oppositions are filed within the next two months of the first publication date, the registration would be granted, and the registration certificate would be issued.

The legal grounds for an opposition are similar to those for registered trade marks; any prohibition on registration is a valid basis for opposition.

In Costa Rica, changes, amendments or corrections can be made during the registration process of a trade mark or even once registered, if this amendment does not imply a significant modification of the trade mark, and regarding the list of goods or services, if this is a limitation, as adding additional goods or services is not permitted.

It is possible to divide an application at any time during the registration process in two or more applications. The only requirement is to request the division to the Trademark Office and pay the official expense.

A division will not be admitted if it implies extending the list of products or services filed in the initial application; but the list may be reduced or limited.

Each fractional application shall keep the filing date of the initial application and the right of priority, when applicable.

If incorrect information is provided when registering a trade mark, the registration can be annulled.

This annulment may be requested by any interested third party to the Trademark Office or it can be filed directly by this Office.

The Trademark Office will decide said issues.

At any time, the registration may be amended to correct any errors if this does not involve a material change in the mark or an expansion of the list of covered goods or services.

According to Costa Rican law, a sign may not be registered as a trade mark if it consists of any of the following:

• The usual or common shape of the product or packaging to which it is applied or a shape necessary or imposed by the nature of the product or service.
• A shape that gives a functional or technical advantage to the product or service to which it is applied.
• Exclusively a sign or indication that, in the current language or commercial usage of the country, is a common or usual designation of the product or service in question.
• Only a sign or indication that in commerce may serve to qualify or describe some characteristic of the product or service in question.
• A simple colour considered alone.
• A letter or digit considered alone, unless it is presented in a special and distinctive manner.
• It is not sufficiently distinctive with respect to the product or service to which it is applied.
• It is contrary to morality or public order.
• It includes an element that offends or ridicules persons, ideas, religions or national symbols of any country or international entity.
• Is likely to cause deception or confusion about the geographical origin, nature, mode of manufacture, qualities, fitness for use or consumption, quantity or any other characteristic of the product or service in question.
• It is identical or similar, in such a way as to cause confusion, to a mark whose registration has expired and has not been renewed during the six-month priority period following its expiration, or has been cancelled at the request of its owner, and which was used in commerce for the same goods or services or others which, by their nature, may be associated with them, unless, since the expiration or cancellation, between one and three years have lapsed. This prohibition shall not apply when the person applying for registration is the same person who was the holder of the expired or cancelled registration or his successor in title.
• A geographical indication that does not comply with the provisions stated by law.
• Reproduces or imitates, totally or partially, a flag or other emblem, acronym, denomination, or abbreviation of denomination of any country or international organisation, without authorisation of the competent authority of the country or organisation.
• Reproduces or imitates, in whole or in part, an official sign of control or guarantee adopted by a country or public entity, without the authorisation of the competent authority of that country.
• Reproduces coins or banknotes of any country, other commercial documents, stamps, seals in general.
• Includes or reproduces medals, prizes, diplomas or other elements that lead people to suppose the obtaining of awards with respect to the corresponding product or service, except if such awards have truly been granted to the applicant of the registration and this is accredited when filling for the registration.
• It consists of the denomination of a plant variety protected in Costa Rica or in any foreign country with which a treaty or agreement has been signed for the protection of plant varieties.
• Where the mark consists of a label or other sign composed of a set of elements, and the name of a product or service is expressed therein, the registration shall only be granted for that product or service.

If the Trademark Office objects the application, they will grant a 15- or 30-day term to file a response. In such response, the applicant must try to persuade the Trademark Office that the application can obtain the correspondent protection.

It is possible to file the pertinent appeals against any decision that refuses a trade mark registration. Such appeals are resolved, in first instance by the Trademark Office and in second instance by the Administrative Board of Appeal of the Registry.

The Costa Rican Trademark Law grants the possibility to file an appeal against the Trademark Office’s resolution before the Administrative Appeals Board. The Board is an independent administrative court, whose interpretation may be different from the Trademark Office’s (even under the same arguments).

In both cases, a hearing will be served, and the applicant can file the correspondent arguments to try to overcome the refusal of the application.

The appeal notice (a simple notice without arguments) must be filed within three days. Then the Board, within the next three or four months, delivers a note of acceptance to present the formal appeal (with all the arguments and evidence) within a period of 15 business days. As a rule, deadlines cannot be extended. However, the applicant may attempt to request an extension of time (to obtain or present additional documents or evidence), at the discretion of the Board, based on its interpretation of how necessary it is to grant it.

Judicial Remedies

Trademark Office or Administrative Board of Appeals resolutions can be challenged through an ordinary lawsuit in judicial court before the Judicial Administrative Conflicts Court.

Costa Rica is not part of the Madrid System for international registrations.

The opposition needs to be filed within two months of the first publication date of the trade mark in the National Gazette. No extensions can be requested. Alternative dispute resolution is not very common in Intellectual Property matters, and even less so in trade mark cases. However, if this happens, the Trademark Office would normally suspend the procedure until an agreement is reached, provided they agree.

The legal grounds of an opposition are normally similar to registered trade marks, although any prohibition to register is a valid basis to oppose.

Lack of distinctiveness, dilution of a trade mark or confusing trade marks are also legal grounds for oppositions.

Any interested party may file an opposition against the registration of a trade mark. This procedure does not require an attorney, though normally they are filed by the legal representatives of the opponent party.

The opponent can file the opposition without holding a trade mark, though according to our legislation, an application must be filed by the opponent to support the opposition.

The average office and attorneys' fees are USD1,000.

Once an opposition is filed, the applicant will be granted a two-month term to file its arguments. Once the Trademark Office has both parties' arguments, the opposition will be resolved.

The applicant is not obliged to respond to the opposition, though it is highly recommended.

Against the decision of the opposition, it is possible to file the pertinent appeals. Such appeals are resolved in first instance by the Trademark Office and in second instance by the Administrative Board of Appeal of the Registry.

In both cases, a hearing will be served, and the applicant can file the correspondent arguments to try to overcome the refusal of the application.

Finally, Trademark Office or Administrative Board of Appeals resolutions can be challenged through an ordinary lawsuit in judicial court before the Judicial Administrative Conflicts Court.

According to Costa Rican legislation, there is a four-year period to request annulment, and a period of five consecutive years for non-use cancellations. The term is counted from the registration date of the trade mark.

Annulment Actions

The legal grounds to file these actions: 

• Prior rights of third parties.
• Any of the legal grounds by which the Trademark Office can reject a trade mark (see above 4.12 Refusal of Registration).

Non-Use Actions

The legal grounds to file this action is the non-use of the trade mark for five consecutive years.

A re-examination of registered trade marks is possible in revocation proceedings (nullity action), but it is not possible in cancellation proceedings (non-use action); the examination that can proceed is that of use.

Regarding copyrights, Costa Rican legislation states that any person who, without being the author, publisher, successor in title or representative of any of them, falsely attributes to themselves any of these qualities and, by means of the accessory action provided, obtains through the authority suspension of the representation or lawful public performance of a work, shall be punished with a fine of 10–30 days, without prejudice to the economic damages caused by their fraudulent action. Each “day of fine” is equivalent of up to 50% of the normal daily income of the infractor.

These types of actions can be filed by the owner of a prior trade mark, any interested third party or the Trademark Office. If the action is filed by a third party, they must have a legal or commercial interest, otherwise it can be rejected. They shall indicate and clearly explain in the cancellation action, the legal or commercial interest in the cancellation action.

This type of action normally is brought before the Trademark and Copyright Office first. Nevertheless, they can file legal actions before the Costa Rican courts if required.

Partial revocation of cancellation actions is possible.

When the grounds for invalidity have only occurred with respect to some of the goods or services for which the trade mark was registered, the invalidity shall be declared only for those goods or services, and they shall be removed from the respective list in the registration of the trade mark.

It is possible (although not common) for the trade mark owner to make an amendment during revocation or cancellation proceedings while they are still pending to be solved. Nevertheless there is no guarantee that it will be accepted.

Generally, cancellation and infringement proceedings will run separately.

There are no special procedures to revoke or cancel marks that were filed fraudulently. The application may be suspended; however, it is important to note that there are no consequences beyond the refusal of the application by the Trademark Office, unless the affected party decides to take matters to a criminal court.

Trademark Assignments must be recorded before the Trademark Office. An assignment document (with specific requirements) as well as a power of attorney must be filed with the application.

Assignment documents must have the following requirements.

• Be signed by the assignor and the assignee.
• Include the trade mark(s) to be assigned.
• Be valued.
• Be apostilled.

If preceding changes in ownership were not recorded, they must be made simultaneously at the time that the new change in ownership is recorded.

Assignments of partial rights of trade marks and copyrights are permitted (eg, percentages are assigned).

Copyright is permanent throughout the life of the author. After their death, those who have legitimately acquired the copyright will enjoy it for a period of 70 years. If the owner of the trade mark is an individual, standard succession rules apply, as the intellectual property is considered the estate of the deceased individual. If the owner is a legal entity, and the death should be understood as dissolution or liquefaction, an executor must be named to execute the dissolution or liquefaction through which the transmission of the trade mark will be determined.

Costa Rican law does not apply specific restrictions or requirements for licences, so general contractual law applies.

Licences are not required to be registered before the Trademark Office to be effective.

According to Costa Rican law, exclusive and non-exclusive licences are accepted.

Licence agreements must contain the following information:

• type of licence;
• territory; and
• duration.

In the absence of any stipulation to the contrary, in a licence agreement, the following rules shall be applicable:

• The licensee shall have the right to use the mark during the entire term of the registration, including renewals, throughout Costa Rica and regarding all the goods or services for which the mark is registered.
• The licensee cannot assign the licence or grant sub-licences.
• Where the licence has been granted as exclusive, the licensor may not grant other licences in respect of the same mark or the same goods or services; nor may he himself use the mark in Costa Rica in relation to those goods or services.

Licence archival rights are not contemplated by law; however, if the parties agree to it contractually, it would be allowed.

Assignments

The assignment must be recorded before the Trademark Office in order to be effective against third parties.

Licences of Use

It is not mandatory to register licences of use before the Trademark Office in order to be effective. Notwithstanding the foregoing, it is always recommended to do so in order to have public notice before third parties.

In Costa Rica, it is possible to assign an application or grant a licence in relation to it during the trade mark registration process. Assignments must be registered to be effective, but licences are not required to be registered to be effective. No evidence or intent to use must be submitted with a trade mark application.

In Costa Rica it possible to assign an application or grant a licence in relation to it during the registration process of the trade mark.

In order to be effective, assignments have to be recorded before the Trademark or Copyright Office. Registration of licences is not mandatory, nevertheless it is highly recommended. 

Authors or their heirs cannot recapture transferred economic rights for copyrighted works, but they can for moral rights, as these are personal, inalienable, unrenounceable and perpetual rights. In cases of a deceased estate, there shall be no legal succession in favour of any State entity, so that the ownership of copyright shall immediately pass into the public domain.

Trade mark rights can be given as a security. For such guarantee to exist and begin to produce effects, it must be registered before the Public Registry.

Claims to request the annulment of a registered trade mark under the Costa Rican trade mark law must be filed within four years of its registration.

Civil trade mark lawsuits for infringement between commercial entities or companies should be filed within four years counted from the date that the infringement ceases. If the infringement involves individual persons, then the statute of limitations that allows for lawsuits is up to ten years.

Some infringement actions can have more extensive statutes of limitations. If the infringement has continuous effects, then the term to file a lawsuit will remain open indefinitely. This applies to unfair competition cases in which the offender remains active in commerce infringing the trade mark rights of the other party.

Infringement of any intellectual property rights established in national legislation or international conventions in force can be pursued.

The owner of a registered trade mark can also pursue civil actions for civil liability for damages and losses caused by the infringement as well as unfair competition claims which occur when the offender's infringement produces confusion with the products or with the activity of another person or company, by using, imitating, reproducing intellectual property rights from the other party. These claims can potentially include dilution and cybersquatting, although those are not expressly contemplated in Costa Rican Law.

Lack of originality may be the content of an opposition for copyright infringement. Who bears the burden of proof of originality, or lack of originality, in these cases? It is up to the plaintiff.

Nonetheless, if the owner of the trade mark can justify a detrimental effect on its rights, it is possible to include dilution or cybersquatting claims. Furthermore, the affected person can also file criminal actions when the infringement classifies as a felony.

Within the civil infringement actions it is possible to file claims for any act that may have a detrimental effect on a trade mark owner's rights. These claims can potentially include dilution and cybersquatting, although those are not expressly contemplated in Costa Rican Law.

In particular, the trade mark owner may take action against the use of a sign identical with or similar to the trade mark for goods or services which are not similar to those for which the trade mark enjoys protection if the trade mark is a trade mark which has a specific reputation in Costa Rica or a notorious global brand and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark which has such reputation.

According to the Costa Rican Trademark Law, at the request of any person with a legitimate interest, the Trademark Office may cancel the registration of a trade mark or limit its scope when the owner has caused or tolerated it to become the generic name of one or more of the goods or services for which it is registered.

Whoever represents or communicates protected literary or artistic works to the public, directly or indirectly, whether by wire or wireless means, including making their works available to the public, in such a way that members of the public may access these works from a place and at a time of their own choosing, without the authorisation of the author, right holder or representative, shall be liable to criminal sanctions. Costa Rica is also a contracting party of the WIPO Copyright Treaty, so Article 12 is applicable.

According to the Law on Procedures for Enforcement of Intellectual Property Rights (No. 8039), several factors are considered in determining whether the use of a sign constitutes trade mark infringement. In particular, the decree of similarity between signs (grammatical, graphical, visual, phonetical), common target markets or distribution channels, and intentionality are usually analysed in these types of claims. Any element that may lead to confusion among the consumers will also be a factor during the lawsuit, such as intensity and duration of advertising and publicity schemes, degree of the trade mark’s recognition. After conducting an overall assessment of the similarity of the signs, the goods and services and the distinctiveness of the trade mark, the judge must then establish that these elements lead to a likelihood of confusion or association with the existing trade mark.

In civil judicial procedures any person affected by actions infringing intellectual property rights can file actions. Normally, the infringement action should be filed by the registered trade mark owner or licensee since a potential harm or actual damage to a right is required to file an action. In certain circumstances, consumers could potentially submit a lawsuit if the infringement causes direct harm to consumers.

Criminal procedures can only be filed by the affected person.

As regards the passive subject of the claims it will always be the offender or competitor that benefits, or may benefit, with the improper behaviour.

If they have a legitimate interest, third parties may join infringement actions after they have commenced.

Costa Rica law does not allow for class actions. However, if a trade mark infringement could lead to consumer harm, consumer protection organisations or associations could potentially file a civil lawsuit.

There are no formal prerequisites or restrictions to filing a lawsuit. However, it is important to have a registered trade mark and adequate evidence to demonstrate the infringement, as well as the damages caused by the illegal or unfair competition actions.

Furthermore, before starting a judicial process, the owner of a trade mark may send, at its discretion, a warning letter to the alleged infringer and demand a declaration of agreement to cease and desist from the respective trade mark infringement, threatening further legal action in the event of non-compliance. This process is not required but is frequently employed to try to solve the conflict without litigation.

Civil lawsuits for infringement will be heard before the Judicial Civil Court in an ordinary civil judicial process. Typically, the process involves the filing of the lawsuit, the defendant’s response, one preliminary hearing to review the process formalities, claims and evidence that will be admitted by the Court, and one additional hearing to evacuate testimony from witnesses and present closing arguments. Afterward, the Court issues the first instance ruling. This ruling can be appealed before the First Chamber of the Supreme Court.

To file a lawsuit, the parties need to be represented by a lawyer and it is usual to execute powers of attorney that require legal authentication. Furthermore, for evidence purposes sometimes it is required to have notary public certifications of documents or affidavits.

For foreign trade mark owners to file infringement claims in Costa Rica, the trade mark must be registered, or prior current use must be proven. Copyright is born from the idea and registrations are considered cross-border by the Costa Rican authorities, so a local registration is not necessary if a foreign one exists.

The pleading standards to initiate an infringement or unfair competition lawsuit are equivalent to any civil lawsuit. In this regard, the lawsuit should list all the relevant facts and legal arguments and claims, submit all evidence regarding the infringement and damages caused, and provide the relevant power of attorneys. The defendant in a trade mark action can initiate a counter lawsuit in response if it considers that the plaintiff has violated his rights.       

The infringer cannot normally initiate declaratory proceedings. If a preliminary injunction is requested by the plaintiff a bond must be posted by the plaintiff to secure the damages that may be caused by the defendant and the bond will be lost in the defendant’s favour if the plaintiff fails to pursue the claim to a favourable conclusion. Regardless, the defendant may pursue a counterclaim against the validity of the plaintiff’s registration as soon as the defendant receives a formal notice of the plaintiff’s complaint.

Alternative dispute resolution mechanisms are not compulsory. ADR is not very common in IP matters in Costa Rica, and even less in trade mark and copyright cases

Trademark Office decisions are not binding to the judge; however, they can provide interpretation and technical criteria that can be used by the Court in its rulings. They can also be included as evidence in legal proceedings.

There is no definitive list of what constitutes a counterfeit mark or copyright, these will depend on the evidence and the arguments to prove that the counterfeit mark or work is not original.

There are no special procedures addressing counterfeit marks. These cases will be handled by the administrative, civil or criminal courts according to the nature of the infraction and the specific claims of the affected party. Criminal liability may also fall on importers, distributors or sellers or supply chain thereof of the products bearing the forged trade mark.

In addition, it is possible to request to the Customs Department the inclusion on their databases so they can notify trade mark owners of any imports that may infringe registered marks. Also, trade mark owners may provide customs with information to help them detect counterfeit products.

There is criminal liability, but this would proceed according to the applicable Criminal Law and proceedings.

Regarding illegal or non-official reproductions, according to the Costa Rican Copyright Law, there is no special procedure, but the Law on Procedures for Enforcement of Intellectual Property Rights (No. 8039) is applicable. There is criminal liability, but this would proceed according to the applicable Criminal Law and proceedings.

There are no special provisions for trade mark proceedings. The proceedings will follow the standard procedure rules for civil, administrative or criminal cases. The Costa Rican authorities specialised in intellectual property are the Trademark Office and the Administrative Board of Appeals. The Costa Rican legal system does not include a jury. The Trademark Office is composed of Examining Attorneys, and formal observations or office actions and refusals are issued by individual Examiners. The Board is composed of a court of five judges and one processing judge. The parties have no influence over who makes the decisions.

Registrations are presumptively valid and provide exclusivity over all products or services covered by the registration certificate. Therefore, the registered owner is considered as the actual owner of the trade mark.

Furthermore, article 25 of the Trademark Law sets forth that the owner of the trade mark will have the exclusive right to impede that third parties use similar or identical signs in commerce without its prior consent when there is a likelihood of confusion. If the sign used by the third party is identical or for identical goods or services, there will be a presumption of confusion.

There is no established extent when it comes to amount; the qualification relies on whether the goods or services are identical, related, or similar to the point of confusion.

The general rule is that the information and evidence have to be obtained by plaintiff. Costa Rican law does not provide for disclosure or discovery. If the information is relevant and there is impossibility of the party to obtain it by its own means, then the parties can request the judge to compel the other party or a third party to provide relevant information or documents or to visually inspect websites or premises located in Costa Rica specifying in each case the documents and information to be sought.

However, if the infringement is obvious, or the owner has already filed an infringement action against the infringer, the owner of a trade mark or commercial designation has a special claim for disclosure of certain information against third parties who, in a commercial capacity, possessed infringing goods, used infringing services, rendered services which were used for the infringement or took part in any such action.

In addition, during infringement proceedings, the defendant may be ordered to disclose specific information to the claimant as part of the infringement claims, eg, with regard to the revenue generated by the infringing goods or services.

In most cases, surveys and experts are not required for this proceeding, since they are not necessary for determining the likelihood of confusion between trade marks or the similarity between the products and services. Still, parties can offer expert witnesses (proposed by the party) or official experts/appraisers that are those registered in the Court.

In certain cases, experts can be useful to assist the judge in determining the compensation or indemnification sums that correspond to the damages and losses that a potential infringement caused.

The typical costs are around 10% of the estimation of the claim, with minimum fees in the USD10,000-15,000 range plus taxes, government fees and expenses. However, this will depend on the resistance from the defendant, costs for obtaining evidence, counterclaims, etc.

Trade mark infringements in certain circumstances can constitute administrative or criminal offences. Specifically, at an administrative level the Consumer Protection Agency can analyse unfair competition cases and impose administrative sanctions when the infringement can cause consumer harm.

If the trade mark is forged, then criminal liability may result including imprisonment and a severe fine. In both cases, the owner of the infringed mark may also pursue damages.

There are two types of defences: formal and material. The formal defences refer to procedure aspects and include among others, expiration of rights due to claims filed beyond the statute of limitations, inadequate representation, lack of legal capacity, lack of actual interest in the case, lack of jurisdiction, existence of settlement agreements, or any defence based on general civil, administrative or criminal law principles are applicable as well.

The material defences refer to substantive matters regarding the use of the sign. In this regard, a defendant may invoke an earlier right to use a specific sign. Defendants may also refer to the use of their own name or address, or the use of the trade mark as an indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or time of rendering a service, or other characteristics of the goods or services, as far as the use of the trade mark by a third party is necessary and in accordance with good faith practices in industrial or commercial matters.

There is no definitive list or statute as the defence will depend on the evidence and the arguments to prove that the counterfeit mark or work is original. 

Parody as an exception also has limits and these would be damage to the work or the author, as well as the risk of confusion. In Costa Rica, it is expressly prohibited, as the authorisation of the right holder is required.

The only exceptions are if there is no economic benefit or profit (eg, personal use, educational use). However, exceptions are extremely limited and are not statuted by law; a judge would usually decide on or grant these exceptions. It is important to note that copyright cases are uncommon in Costa Rica; if the law does not contemplate it, these circumstances would be ruled by jurisprudence or on a case-by-case basis.

The only exceptions are if there is no economic benefit or profit (eg, personal use, educational use). However, exceptions are extremely limited and are not statuted by law; a judge would usually decide on or grant these exceptions. It is important to note that copyright cases are uncommon in Costa Rica; if the law does not contemplate it, these circumstances would be ruled by jurisprudence or on a case-by-case basis.

The only exceptions are if there is no economic benefit or profit (eg, personal use, educational use). However, exceptions are extremely limited and are not statuted by law; a judge would usually decide on or grant these exceptions. It is important to note that copyright cases are uncommon in Costa Rica, if the law does not contemplate it, these circumstances would be ruled by jurisprudence or on a case-by-case basis.

A trade mark is considered in use when it has been placed on the market, in the quantity and form that normally corresponds, considering the size of the market, the nature of the products and the modalities under which they are marketed; if applicable, also when the products or services have been exported or provided abroad from Costa Rica.

According to Costa Rican legislation, the registration of a trade mark grants its owner the right to prohibit a third party from using the trade mark on legitimately marked goods introduced into commerce, in the country or abroad, by said owner or another person having the owner's consent, provided that such goods and the containers or packaging have not undergone any modification, alteration or deterioration and that they do not cause prejudice to the owner.

The first sale initiates the owner’s rights, but it does not exhaust them.

Copyrights are protected from their conception; however, on legal practice, it is important to be able to prove the authorship of the work. It is important to note that copyright cases are uncommon in Costa Rica; if the law does not contemplate it, these circumstances would be ruled by jurisprudence or on a case-by-case basis. The general rule is that there is no issue if there is no economic benefit or profit (eg, personal use, educational use).

If the work is published, the copy must contain the ISBN number (International Number for Literary Works) assigned by the National Library, and the work must also be deposited in the following libraries and certified copies or originals of the deposit receipts must be presented: National University - Costa Rican University - UNED - Technological Institute of Costa Rica - Legislative Assembly - National Library - National Archive Directorate.

All injunctions available under civil or criminal proceedings are available for trade marks. In civil proceedings, the trade mark owner as plaintiff may file for injunctive relief when there is a reasonable degree of probability that his rights will be affected by the infraction.

The judge has discretion to order remedies, such as forcing the infringer to seize the infringing product. All remedies shall comply with the proportionality principle, which means that the judge must analyse the severity of the infringement, the extent of the actual or potential damages that can be caused, the legitimate interests of third parties or to the public interest.

The judge can also request a bond or guarantee that will need to be posted by the plaintiff to guarantee the damages caused to the defendant if the final decision of the case does not rule in the plaintiff’s favour or if the plaintiff does not prosecute the case all the way through. Bond amounts are usually set by a judge on a case-by-case basis. Proceeding and bond amounts are regulated by civil law and are usually valued or assessed by an expert or appraiser appointed by the judge.

In the case of a trade mark infringement, the owner of the trade mark may apply for destruction or recall of infringing goods. However, this claim must fulfil the proportionality principle and this remedy shall not apply if the destruction or impoundment is disproportionate in individual cases.

The general indemnification rules for damages under civil law apply. As such, the plaintiff can seek compensation for all actual and direct damages that result from the infraction including lost profits of the owner of the infringed trade mark registration.

Furthermore, to determine the amount of damages the judge can factor in the value of the infringed goods or services as per their market value or their suggested retail price and the profits received by the infringer from the unlawful conduct.

Each party is responsible for its own costs. However, the losing party is required to reimburse the prevailing party for all costs of litigation fees inclusive of court fees, expenses and attorney fees of both parties in the statutory amount of the Costa Rican Bar Association; this does not include higher costs due to a fee arrangement. Fees may be appealed, if further instances have not been exhausted; however, if the resolution is final (ie, there is no further recourse), fees cannot be shifted.

In Costa Rica, the constitutional due process principle requires the notification of the defendant who has the opportunity to participate in any proceeding that may affect its rights or cause harm. This also grants the right to be heard before a preliminary injunction.

Under exceptional circumstances of irreparable harm or urgency the Court can order a provisional or temporary remedy without prior notice to the other party. However, the affected party must be notified of the court resolution and can present its opposition within a three-day term. This scenario is unlikely for trade mark proceedings but is available under Costa Rican civil process.

In Costa Rica, parallel imports are permitted and there is no remedy against them from a trade mark perspective. Provided that the owner has recorded his contact and trade mark information in the customs database, if there is an import of counterfeit products detected by customs, a notice will be sent to the owner to inform them of the shipment. If deemed counterfeit, the trade mark owner is entitled to request the shipment not to be released and may initiate criminal proceedings.

In Costa Rica, the National Constitution and the Alternative Dispute Resolution Act allow the parties to freely settle any existing dispute before a ruling is entered as long as they are in agreement.

Settlements can be executed within the judicial process through a formal court mediation or in a court hearing or can also be extrajudicial through direct negotiation of the parties or before a conflict resolution centre either through formal conciliation, mediation or arbitration.

Alternative dispute resolution mechanisms are not compulsory. ADR is not very common in IP matters in Costa Rica, and even less so in trade mark cases.

In infringement cases the most common ADR option to reach settlement agreements is through direct negotiation of the parties. Furthermore, contract provisions (arbitration clauses) may require the settlement of trade mark disputes between the contract parties before an arbitration tribunal.

Generally speaking, other court proceedings do not have an influence on the current proceedings. However, in some exceptional circumstances, the court can issue stays to prevent conflicting resolutions.

Furthermore, certain actions brought before the Constitutional Chamber of the Supreme Court can order the suspension of the final rulings from proceedings in Civil, Administrative or Criminal Courts, as long as there is a material or procedural connection between the issues discussed in the Constitutional Chamber of the Supreme Court and the other judicial infringement proceedings.

It is possible to file the pertinent appeals against any decision that refuses a trade mark registration. Such appeals are resolved, in first instance by the Trademark Office and in second instance by the Administrative Board of Appeal of the Registry.

The Costa Rican Trademark Law grants the possibility to file an appeal against the Trademark Office’s resolution before the Administrative Appeals Board. The Board is an independent administrative court, whose interpretation may be different from the Trademark Office’s (even under the same arguments).

In both cases, a hearing will be served, and the applicant can file the correspondent arguments to try to overcome the refusal of the application.

The appeal notice (a simple notice without arguments) must be filed within three days. Then the Board, within the next three or four months, delivers a note of acceptance to present the formal appeal (with all the arguments and evidence) within a period of 15 business days. As a rule, deadlines cannot be extended. However, the applicant may attempt to request an extension of time (to obtain or present additional documents or evidence), at the discretion of the Board, based on its interpretation of how necessary it is to grant it.

In civil proceedings, the first instance court decision can be taken to an appellate court. The competent appeals court and the timeframe to submit the appeal will depend on the total sum claimed in the lawsuit. For “low claim” proceedings, the appeal has to be filed before the Civil Appeals Court within five days of the notice of the first instance court decision. For lawsuits that exceed the “low claim” thresholds, the appeal has to be filed within 15 days before the First Chamber of the Supreme Court.

General Civil Process rules for appeals apply in trade mark proceedings.

During the appeal process, the competent higher court can review:

• infraction to due process or procedure regulations;
• lack of motivation or contradiction in the decision;
• legal validity of the evidence;
• inadequate analysis of evidence or interpretation error; and
• violation of substantive legal regulations.

Rights of publicity or personality usually are protected as regular trade marks and have the same registration process.

Costa Rica has regulations in the Competition Promotion and Consumer Defense Act and its by-laws that apply to unfair competition cases. Those regulations assist in the enforcement of the infringement situation. Unfair competition cases must be discussed on a judicial ordinary civil proceeding or at an administrative level before the National Consumer Commission when the illegal practice can cause consumer harm.

Recent emerging issues in Costa Rica include:

• electronic filing and complete registration procedure is now available; and
• electronic certificates are now available.

There have not been cases of the sort in Costa Rica at present time. Courts may cite foreign cases or jurisprudence, especially if the jurisdiction cited has a similar law system or treaties in common with Costa Rica.

There are no special rules for trade marks in the internet nor service provider liability.  However, general liability and compensation principles apply since the liability for online infringement is no different than the liability in regular “physical” commerce. If the service provider is not acting diligently and is favouring the infringement, they could be liable for damages under civil liability principles (eg, for not responding or co-operating in duly justified requests).

In Costa Rica, having a company name does not constitute an authorisation to use that company name as a trade mark for products or services.

Trade names, according to our legislation, are the signs that identify and distinguish a company or a specific commercial establishment. The exclusive right to a trade name is acquired by its first use in commerce and ends with the extinction of the company or establishment using it. Though it is highly recommended to register them before Trademark Office.