Overview of Costa Rica Trademark Laws

By on June 7, 2021   /   Costa Rica, Intellectual Property, Trademark, Uncategorized  

This is a list of International conventions and treaties, laws and regulations in effect pertaining to trademark registration in Costa Rica as of 2021. It is outside of the scope of this article to discuss circulars or administrative resolutions pertaining to trademark prosecution, which alters (and sometimes changes) the scope of a particular provision.

Spanish is the official version of the respective legal texts. No official translation into any other language is provided.

Treaties and International Conventions

Under the Constitution of the Republic of Costa Rica, treaties and conventions have a hierarchy above regular law. However, in practice, often laws are not amended to implement the compromises undertaken by the country in the new treaty or convention or take steps to eliminate any discrepancies with internal legislation. In these cases, the administrative authorities often revert to applying the law, despite the contradiction. In such scenario, a party may be forced to seek judicial assistance to enforce the treaty or convention.

  • Convention Establishing the World Intellectual Property Organization (WIPO) (as of June 10, 1981)
  • The Uruguay Round (GATT, later succeeded by WTO) (as of November 2, 1989)
  • WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (as of January 1, 1995)
  • Paris Convention for the Protection of Industrial Property(as of October 31, 1995)
  • WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (as of March 28, 2008)
  • Trademark Law Treaty (as of October 17, 2008)
  • Lisbon Agreement for the Protection of Appellations of Origin (as of July 30, 1997)
  • The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille) (as of December 14, 2011)

Costa Rica is also a party to multilateral trade agreements, which define standards for protection of IP beyond other instruments (“TRIP Plus” provision). The two most notable ones are:

  • Costa Rica-México Free Trade Treaty (since 1994)
  • Dominican Republic – Central America – United States of America Free Trade Agreement (DR-CAFTA) (since November 21, 2007)

The Costa Rica-México Treaty is of particular interest. It contains provisions that may prove especially useful to trademark owners in case of litigation. For instance, the Treaty allows a party that first registered an identical or similar mark, for the identical or similar goods or services, in each of the respective countries to request annulment of the subsequent registration in the other country. In light of the most favored nation treatment principle governing international trade, this provision could have abroad-reaching effect in case of trademark squatting or bad-faith registration of trademarks.

Laws and Regulations

The laws and other legislation included in this section are the mayor and most relevant laws implemented by Costa Rica for the protection of trademarks, trade names and other distinctive signs. There are numerous other laws that include specific provisions that are relevant for certain industries (for instance, laws pertaining to the use of trademark for banks, insurance companies and financial institutions, or for identifying products or sanitary or regulatory interest):

  • Trademarks and Other Distinctive Signs Law (No. 7978 of January 6, 2000)
  • Regulations to the Trademarks and Other Distinctive Signs Law (Executive Decree No. 30233-J of February 20, 2002)
  • Observance Procedures of Intellectual Property Rights Law (No. 8033 of October 12, 2001)
  • Administrative Rules on Prosecution of Appeals before the Administrative Registration Court (of November 28, 2016)
  • Regulations to the Trademarks and Other Distinctive Signs Law Concerning Geographical Indications and Designations of Origin (Executive Decree No. 33743-J of March 14, 2007)
  • Administrative Rules on the Service of the Administrative Registration Court (Executive Decree No. 35456-J of March 30, 2009)
  • Administrative Rule DPI-0003-2019 on Recognition of Fame or Notoriety (of June 28, 2019)
  • Regulations to the Uniform Central American Customs Code (Recauca) (Executive Decree No. 42876 of January 28, 2021)
For an official updated version of the legal text, please visit SINALEVI, the National System for Legislation at http://www.pgrweb.go.cr/scij/

The following authorities also maintain their own databases of laws and regulations:

  • Trademark Office: Industrial Property Registry (Registro de la Propiedad Industrial) – Website: rnpdigital.com
  • Trademark Appeal Board: Tribunal Registral Administrativo – Website: tra.go.cr
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Costa Rica: Yearly Tax on Legal Entities Ruled Unconstitutional

By on March 11, 2015   /   Corporate, Costa Rica, Tax  

magnifying-glass

We have discussed the Yearly Tax on Legal Entities in several several different occasions.

This is a tax levied since 2012 on legal persons in Costa Rica (the prime examples being “sociedades anónimas” or corporations and limited liability companies), payable in January of every year. The tax is enforced by strict penalties that could even lead to dissolution of the delinquent entities.

However, in Decision No. 1241-2015 of January 28, 2015 the Costa Rican Constitutional Court ruled on a lawsuit brought against the law that has been pending since November 2012. As a result, the Tax on Legal Entities Law was partially declared unconstitutional and will cease to be effective as of 2016.

The decision has been controversial because despite the Court’s findings that the law is contrary to Costa Rica’s constitutional regime, it has chosen to maintain its effectiveness up to 2015. Ordinarily, any ruling of unconstitutionality has retroactive effects to a law’s date of effectiveness. Nevertheless, the Constitutional Court has powers to decide otherwise, based on the potential fallout of the decision. In this particular case, a ruling of unconstitutionality since the effective date of the law would have forced Costa Rican authorities to reimburse any payments made under the law, which could harm public finances. Instead, the Court opted to maintain the tax’s effectiveness until the end of the year.

As a result, qualifying legal entities are still required to pay the tax during 2015. The penalties for lack of payment have been somewhat lessened in expectation of further clarification from the Court regarding the effects of the unconstitutionality ruling, which are still not fully clear. For instance, documents filed by delinquent entities before the National Registry are no longer automatically refused registration or recordal, but are suspended pending payment (thus maintaining an effective filing date that can constitute constructive notice to third parties).

Client alerts are meant solely for general information and should not be regarded as legal advice. If you would like additional information, please contact:

For more information:

Luis D. Acuña
tel. 00 (506) 2221-9058
LDAcuna@AcunaLegal.com


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Amendment to Patent & Design Regulations in Costa Rica as of April, 2014

By on May 22, 2014   /   Costa Rica, Intellectual Property, Patent  
As of April 24, 2014, several new important changes practice before the Costa Rican Patent Office regarding Patents of Invention, Designs and Industrial Models & Utility Models came into effect.

The amendment is notable for introducing new  formal and substantive changes to payment of annuities, prosecution and filing of applications for registration of patents of invention, designs and industrial models and utility models. The amendment also consolidates de facto practices adopted by the Patent Office that did not have prior legal basis.

The Regulations were issued via Executive Decree No. 38289-H, published in official Gazette No. 78 of April 24, 2014, which amends and expands the existing Regulations to the Patents Law.

Some of the most notable changes include:

Patents of Intention and Utility Models

  • Dimensions of drawings may not exceed 15cm by 15 cm (5.90 inches by 5.90 inches) and shall not contain any text; only reference numbers to the corresponding text in the specification.
  • Drawings may consist of photographs of the subject matter of the invention, as long as they have a neutral background and no shadows.
  • Applications that are notoriously deficient may be automatically refused. 50% of the filing fee will be returned to the applicant.
  • One single extension of time to submit the Power of Attorney may be requested, as long as sufficient justification is provided.
  • At the request of the applicant, publication can be delayed for up to 12 months after the filing date.
  • Applicant facing an adverse examination report have 1 month to file a formal response. Within the first 15 days of said deadline, the applicant may choose to meet with the examiner to discuss the issue.
  • Payment of the grant fee for patents and utility models is assimilated to payment of the first patent annuity. However, at the same time, the applicant must pay second and subsequent annuities as of the date of presentation of the application. Failure to pay will cause the Patent Office to initiate legal action for collecting the amounts owed by the applicant.

Designs and industrial models:

  • The concept of novelty was changed substantially. A design or industrial model is deemed to be original as long as the exterior appearance is due to the creative effort of an individual creator and does not imply a change in color or shape of known designs and industrial models.

Inquiries: ip@alpilaw.com

Tel. (506) 2221-9058 or 2222-1785
Fax (506) 2222-6054

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