In Costa Rica trade marks are mainly governed by Law No 7978 (the “Trademark and Other Distinctive Signs Law”) while copyrights are mainly governed by Law No 6683 (the “Copyright and related Rights Law”). Furthermore, Law No 8039 (the “Law on Procedures for Enforcement of Intellectual Property Rights”) applies to trade mark and copyright infringement cases, while Law No 7472 (the “Competition and Consumer Defence Law”) relates to 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 rank above regular law. Costa Rica is a member of the following treaties that include trade mark provisions:

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

The Paris Convention, the Nice Agreement, the TLT, the TRIPS Agreement and the Berne Convention also contain provisions on copyrights.

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

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

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 trade marks that are protected by statute in a different way to ordinary trade 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 applies the classification of goods and services contained in the Nice Agreement.

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

Additionally, Costa Rica recognises and protects trade 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 trade marks that are well known.

Distinctive character is required to apply for trade mark protection, in addition to the formal requirements of a trade mark application. Use is also 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 to the WCT, so Article 11 of the Trademark and Other Distinctive Signs Law 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 as well as when the products or services have been exported or provided abroad from Costa Rica (if applicable).

According to Costa Rican legislation, the use of a specific type of symbol to denote that a trade mark is registered or that an owner asserts common law rights in the trade mark is not mandatory. However, 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 registering a trade mark is if it infringes a third-party copyright.

According to the Copyright and related Rights Law, 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;
• computer programs, including their successive versions and derived programs;
• lectures, addresses, sermons and other works of a similar nature;
• dramatic musical works, choreographic works and pantomimes;
• musical compositions, whether or not accompanied by music, and cinematographic works, to which assimilated works are expressed by a process analogous to cinematography;
• drawing, painting, architecture, sculpture, engraving and lithography works, 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 virtue 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, or 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 the 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 their 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 works that were not created by a human in Costa Rica at the present time. If the law does not contemplate it, these circumstances would be determined by jurisprudence or on a case-by-case basis.

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

Rights granted to copyright owners 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 and related Rights Law. It applies to the transmission mortis causa, in principle, of the economic right, or the exercise of the moral right. However, with regard to the moral right, 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 will be permanent during a copyright owner’s lifetime. After their death, the copyright will be enjoyed for a period of 70 years by those who have legitimately acquired them. In cases involving a deceased estate, there will be no legal succession in favour of any State entity, so copyright ownership will immediately pass into the public domain.

Articles 111 and 132 of the Copyright and related Rights Law provide for the possibility that authors and holders of related rights, in defence of their rights, act through representative organisations.

Furthermore, Title IX of the Regulation of the Copyright and related Rights Law expands upon these legal provisions with regard to so-called Collective Management Societies, which, according to Article 48 of the Copyright and related Rights Law “are private legal entities whose sole and exclusive purpose is not profit or gain, but rather to protect the patrimonial rights of the holders of copyright and related rights, both national and foreign, recognised by the Law and international treaties ratified by the country; as well as to collect, on their behalf, and deliver the economic remuneration derived from the use of their works and intellectual productions entrusted to their administration by their associates or represented parties, or by affiliates of foreign entities of the same nature”.

As stated, these entities are authorised to collect and distribute the remunerations corresponding to the use of the works or productions subject to the related rights entrusted to them by the authors or their representatives. According to Article 52 of the Copyright and related Rights Law, this distribution must be carried out equitably and proportionally among the holders of the rights they manage. They are also empowered to exercise the entrusted rights and assert them in all kinds of administrative and judicial proceedings. This includes the authority to grant licences for the use of the managed rights and to establish general tariffs that determine the remuneration required by authors for the use of their repertoire (Articles 49 and 50 of the Copyright and related Rights Law). This is without prejudice to any legal actions the user of the protected work may take if they consider that the tariff established by a Collective Management Society for its public communication is abusive (Article 51 of the Copyright and related Rights Law).

Some examples of Collective Management Societies are as follows.

• The Association of Composers and Musical Authors of Costa Rica. This was created by musical authors and composers with the aim of collecting and distributing royalties.
• The Costa Rican Performers’ Association (AIE Costa Rica). This 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 Copyright and related Rights Law.
• FONOTICA (Asociación Costarricense de la Industria Fonográfica y Afines). This is a non-profit organisation and industry trade group representing national and multinational record companies in Costa Rica. FONOTICA is the national agency of the International Standard Recording Code (ISRC) and the affiliate member of the International Federation of the Phonographic Industry (IFPI) in Costa Rica.

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 Copyrights 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.

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

The name of the author with their full qualifications must be provided. If the application is submitted through a representative, they must provide a suitable document accrediting the representative as such and the name and qualifications of the represented party must be indicated. If the power of attorney is granted abroad, it may be formalised in line 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, the full name and qualifications of the author should be indicated and the appropriate document through which the right was acquired submitted. The title of the work to be registered should be indicated as well as the genre (literary or artistic). A brief description of the content of the work (three to five lines) should also be provided. Additionally, whether the work is unpublished or published should be indicated and if applicable, whether the work is collective or collaborative should be indicated.

The filing fee is USD5.

Lack of originality or formality issues may lead to a refusal. If the Copyrights Office objects to the application, they will grant a 15 or 30-day term to file a response. In the response, the applicant must try to persuade the Copyrights Office that the application can obtain the relevant protection.

Costa Rican law provides for a copyright to also be protected by trade mark or related rights 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 this, an opposition based on prior use of the trade mark may be filed. However, they will be declared inadmissible if the opponent does not prove that they have not applied to the Industrial Property Registry for registration of the used trade mark. The Industrial Property 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 trade mark is proven and the requirements set out in this law for registration of the trade mark have been complied with, registration will be granted. Registration may also be granted for the trade mark against which confusion is likely to be created. In these cases, the Industrial Property Registry may limit or reduce the list of goods or services for which each of the trade 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 in the near future.

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

The term of registration 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. However, there is also a subsequent six-month grace period. If a registration expires or is not submitted within the six-month grace period, it cannot be reactivated. In this case, 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 trade 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 will 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 they agree to reduce or limit the list.

The trade mark application requirements are as follows.

• The name and address of the applicant, or if it is a legal entity, the place of incorporation.
• The trade mark whose registration is requested.
• A reproduction of the trade mark, in the case of word marks with special graphics, shapes or colours, or figurative, mixed or three-dimensional marks with or without colour.
• A translation of the trade mark, when it is constituted by some denominative element with a meaning in a language other than Spanish.
• A list of the goods or services for which the trade 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. However, 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; or
• if the trade mark has been declared famous and/or notorious.

No other prior rights are considered when examining an application. Costa Rica applies 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 restricted. The exception is when both companies belong to the same economic group and the relationship can be demonstrated by means of a capital stock certification where it is determined that both are related.

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 into two or more applications. The only requirement is to submit a request for the division to the Trademark Office and pay the official fee. 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 will 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 the Trademark Office. The Trademark Office will decide on these issues.

At any time, the registration may be amended to correct any errors if this does not involve a material change in the trade 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 people, 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 trade mark whose registration has expired and has not been renewed during the six-month grace 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 will not apply when the person applying for registration is the same person who was the holder of the expired or cancelled registration or their 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, unless the awards have truly been granted to the registration applicant and this is verified when filing 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; and
• where the trade 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 will only be granted for that product or service.

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

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

An opposition to a trade mark application 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 (ADR) 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.

Under Costa Rican legislation, a revocation request can be filed within four years to seek annulment of a trade mark, while a non-use revocation request can be filed after five consecutive years of non-use. These periods are calculated from the trade mark’s registration date.

The legal grounds of an opposition to a trade mark application are normally similar to filing an opposition 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 an opposition.

The legal grounds to file a cancellation proceeding are:

• prior rights of third parties;
• any of the legal grounds by which the Trademark Office can reject a trade mark (see 4.10 Refusal of Registration); and
• any violation to essential formalities of the registration process.

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

The opponent can file the opposition without holding a trade mark, although under Costa Rican legislation, an application must be filed by the opponent to support the opposition.

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

A revocation or cancellation proceeding can be initiated by the owner of an existing trade mark, any interested third party, or the Trademark Office itself. If a proceeding is filed by a third party, they must demonstrate a legitimate legal or commercial interest in the matter or the action may be rejected. The third party must clearly state and explain their legal or commercial interest in the cancellation proceeding.

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, although it is highly recommended.

A revocation or cancellation action is typically initiated before the Trademark and Copyright Offices. However, if necessary, legal actions can also be filed before the Costa Rican courts.

It is possible to file the pertinent appeals against a decision to accept an opposition. These appeals are resolved in the first instance by the Trademark Office and in the 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 relevant arguments to try and reverse a decision to refuse the application.

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

Although it is uncommon, the trade mark owner may request an amendment during revocation or cancellation proceedings while they are still pending. However, there is no guarantee that the amendment will be accepted.

Cancellation and infringement proceedings will generally run separately.

There are no specific procedures for revoking or cancelling trade marks filed or registered fraudulently. Therefore, the fraud can be alleged by the affected party on any type of proceeding where the legality of the trade mark is in question. If the trade mark has not been registered an opposition can be filed. However if registration has taken place ordinary cancellation or invalidation proceedings will apply. Furthermore it is possible for the party to pursue the matters through the administrative conflict or criminal routes.

Trade mark 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:

• be signed by the assignor and the assignee;
• include the trade mark(s) to be assigned;
• be valued; and
• 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).

If the owner of the trade mark is an individual, standard succession rules apply, as the intellectual property is considered part of the estate of the deceased individual. If the owner is a legal entity, the death should be understood as dissolution or liquefaction, and an executor must be named to execute the dissolution or liquefaction through which the transmission of the trade mark will be determined.

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.

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:

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

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

• The licensee will have the right to use the trade mark during the entire term of the registration, including renewals, throughout Costa Rica and regarding all the goods or services for which the trade 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 trade mark or the same goods or services nor may they use the trade mark in Costa Rica in relation to those goods or services.

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

In Costa Rica it is possible to assign an application or grant a licence in relation to it during the trade mark registration process. In order to be effective, assignments have to be recorded before the Trademark or Copyright Offices. Registration of licences is not mandatory but is highly recommended.

Claims to request the annulment of a registered trade mark under the Costa Rican Trademark and Other Distinctive Signs 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 of the date that the infringement ceases. If the infringement involves individual persons, the statute of limitations 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 or 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 ground of an opposition for copyright infringement. Who bears the burden of proof of originality, or lack of originality, in these cases will be 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 constitutes 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 these 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 has a specific reputation in Costa Rica or a well-known global brand and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.

According to the Costa Rican Trademark and Other Distinctive Signs 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 allowed 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, will be liable to criminal sanctions. Costa Rica is also a contracting party to the WCT, so Article 12 of the Copyright and related Rights Law is applicable.

According to the Law on Procedures for Enforcement of Intellectual Property Rights, 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 consumers will also be a factor during the lawsuit, such as intensity and duration of advertising and publicity schemes and the 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.

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 resolve 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 obtain testimony from witnesses and allow closing arguments to be presented. The Court will then issue 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 it is sometimes 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 infringer cannot normally initiate declaratory judgment 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. The defendant may pursue a counterclaim against the validity of the plaintiff’s registration regardless as soon as the defendant receives a formal notice of the plaintiff’s complaint.

ADR mechanisms are not compulsory. ADR is not very common in intellectual property matters in Costa Rica, and even less so in trade mark and copyright cases.

Trademark Office decisions are not binding on a judge. However, they can provide interpretation and technical criteria that can be used by a court in its rulings. They can also be included as evidence in legal proceedings.

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

There are no special procedures addressing counterfeit trade 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 the Customs Department include them on their databases so they can notify trade mark owners of any imports that may infringe registered marks. Trade mark owners may also provide customs with information to help them detect counterfeit products.

Criminal liability is possible but this will proceed in line with the applicable criminal law and proceedings.

Regarding illegal or non-official reproductions, according to the Costa Rican Copyright and related Rights Law, there is no special procedure, but the Law on Procedures for Enforcement of Intellectual Property Rights 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 Appeal.

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 Administrative Board of Appeal 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 and Other Distinctive Signs Law states that the owner of the trade mark will have the exclusive right to prevent third parties from using 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 is 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 typical costs are approximately 10% of the estimation of the claim, with minimum fees ranging from USD10,000 to USD15,000 plus taxes, government fees and expenses. However, this will depend on the resistance from the defendant, costs for obtaining evidence, counterclaims, etc.

There are two types of defences: formal and material. The formal defences refer to procedural 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.

The material defences refer to substantive matters regarding the use of the trade mark. In this regard, a defendant may invoke an earlier right to use a specific trade mark. 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 line 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.

The only exceptions are if there is no economic benefit or profit (eg, personal or educational use). However, exceptions are extremely limited and are not laid down in 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 include a provision for it, these circumstances would be determined by jurisprudence or on a case-by-case basis.

Satire or parody as an exception to copyright infringement has limits. These limitations are 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.

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 or when the products or services have been exported or provided abroad from Costa Rica (if applicable).

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 the owner or another person having the owner’s consent, provided that the 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 determined 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 or educational use).

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 their rights will be affected by the infraction.

The judge has discretion to order remedies, such as forcing the infringer to forfeit the infringing product. All remedies will 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 the public interest considerations.

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 pursue 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 will not apply if the destruction or impoundment is disproportionate in individual cases.

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

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 litigation fee costs including the court fees, expenses and attorney fees of both parties in the statutory amount of the Costa Rican Bar Association. However, this does not include higher costs due to a fee arrangement.

Fees may be appealed if further recourse options have not been exhausted. However, if the resolution is final (ie, there is no further recourse), fees cannot be appealed.

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 in 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 their contact and trade mark information in the customs database. If customs do detect an import of counterfeit products, 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.

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

The Costa Rican Trademark and Other Distinctive Signs Law grants the possibility to file an appeal against the Trademark Office’s resolution before the Administrative Board of Appeal. The Administrative Board of Appeal 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 relevant arguments to try to overcome the refusal of the application.

The appeal notice (a simple notice without arguments) must be filed within three days. The Administrative Board of Appeal Board in the next three to four months will deliver 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 Administrative Board of Appeal, based on its interpretation of how necessary it is to grant it.

In civil proceedings, the first instance court decision can be appealed 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.

Recent emerging issues in Costa Rica include:

• electronic filing and a complete registration procedure now being available; and
• electronic certificates now being available.

There have not been notable cases in Costa Rica recently. Courts may cite foreign cases or jurisprudence, especially if the jurisdiction cited has a similar law system or is a signatory to the same treaty as 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 in-person 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).