Costa Rica’s Cannabis Trademark Applications

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On March 1st, 2022, Costa Rica legalized cannabis for medicinal use and commercialization of non-psychoactive hemp, under license. The law approved by the legislature excludes cultivation for personal and recreational use.

The country joins many other countries seeking to incentivize the booming industry of medical cannabis, and an influx of IP owners seeking trademark protection in this changing landscape is expected.

What are the implications for trademark owners?

There are no explicit guidelines by the Costa Rican Industrial Property Registry (“RPI“) for handling cannabis-related trademark applications. As of this writing, about 150 trademark applications have been filed for goods and services including “hemp”, “cannabis”, “THC”, “CBD” and related terms across the various classes encompassing the Nice Classification. Of these applications, 37 have been rejected and about two dozen others are currently pending. Most of the applications in this later category have faced misdescriptiveness, genericness or descriptiveness issues.

There are surely a fair number of other applications for trademarks that are meant to cover hemp or cannabis related items, but they do not explicitly include them in the specification. Traditionally, Costa Rican authorities have allowed broad descriptions of goods and services (often, the heading of the respective Nice class is allowed). However, even if allowed, such strategy is not without risks. A lot will depend on how directly related the good or service is to the plant or its psychoactive component. For instance, a trademark registration meant for consultancy services in the field, or for plant fertilizers, will not be as vulnerable as a registration for goods directly related to the substance.

In the specific case of pharmaceuticals, the Administrative Appeal Board (“Tribunal Registral Administrativo“) has ruled that broad descriptions, such as use of the class heading, are unenforceable for failure to identify the actual goods meant to be commercialized under the mark. While this interpretation has questionable legal grounding, it means that marks under these conditions may fail to be cited against a junior application for a similar mark that covers specific items. The trademark owner will not be notified under this particular scenario, leaving the onus on the IP owner to actively monitor filings.

This interpretation has also began seeping into other classes, as well. In particular, the Registry inconsistently requires applicants to specify the nature of goods or services commercialized under Class 35 to allow the registration to move forward. One can also imagine analogous cases for goods of different nature (for instance, chemicals for use in industry). With time, it is likely that the requirement of specificity will continue becoming more enshrined.

Trademarks related to hemp-based textile goods or clothing are unlikely to be scrutinized as zealously as, say, marks covering cosmetics or pharmaceuticals. A refusal based on the nature of the goods or services cannot be discarded, even despite the law. Examiners have considerable leeway in their examination powers. However, in these cases, an applicant may take shelter in Article 7 of the Paris Convention for the Protection of Industrial Property:

The nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark.

This rule is mirrored in Article 15(4) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The international nature of these instruments grant them it hierarchical superiority to even national law.

The law will come into effect once sanctioned by the Executive Body and published in the official Gazette.

Join us for the INTA Annual Meeting 2015 in San Diego, CA


ALPI will be attending the premier academic and networking event for trademark professionals from May 2 to May 6, 2015.

With over 9,000 attendees from more than 140 jurisdictions expected to attend, the INTA Annual Meeting is the largest trademark event in the world.

This year’s event will be held in the beautiful city of San Diego. Visit INTA’s website for more information:

Luis D. Acuña will represent ALPI at the Annual Meeting in San Diego in May and would be delighted to meet colleagues, in-house practitioners and law firms from all over the globe.

If you are also attending, please get in touch and we can arrange a meeting. If interested, please send us an email to

Costa Rica: Brief Primer Intellectual Property Protection

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Thanks to the international harmonizing trend in IP laws, the procedure for registration and protection of patents of invention, trademarks and other IP rights is fairly standardized in Costa Rica and Latin America in comparison to the rest of the world. Most of the basic considerations regarding protection abroad also apply.

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Where do you register your rights? 

IPRs are registered by the Industrial Property Registry of Costa Rica.

Is a trademark registration mandatory?

Rights are acquired by mere use of the mark in commerce to identify goods and services. However, registration provides the greatest protection.

Before commercialization may begin, chemicals, hygienic products, cosmetics, medicines, biomedical machines, biomedical materials, and similar goods require a sanitary registration before the Ministry of Health. In these cases, a trade or service mark registration may be a formal requirement.

It is essential to plan any filings ahead of time to avoid any potential delays in entering the market.

What if my rights are infringed?

While use-based rights are recognized, it is preferable to initiate legal action after registration to reduce the burden of proof on the plaintiff.

In addition, it is common for local distributors to register the foreign company’s marks when the former fails to do so in a timely fashion. Sometimes this is done as a necessity (for instance, to secure sanitary permits), but other times as a way to obtain leverage in future negotiations.

How long does it take to secure a registration?

In the case of trade and service marks, the standard is 5 to 9 months. Additional delays may occur if the application encounters any issues.

Patents of invention and industrial designs may take upward from 24 months to register.

How to apply?

It is always advisable to conduct a search to determine if there are any conflicting third-party registrations or statutory limitations before you begin the application process.

If you wish to proceed with the registration process, you will need to have a Law Firm file and prosecute the application for you.

Law firms are appointed through a Power of Attorney. This document only requires notarization under the laws of the country of issuance, but not legalization by the Consulate/apostille. Often this is the only document that will be required to obtain a patent or trademark registration, but sometimes additional documents may be required (for instance, to prove assignment of rights or claim priority based on foreign applications).

Term of Registration

The registration term for trademark is 10 years from the date of registration, renewable for additional intervals of 10 years each. The term for patents of invention is 20 years from the priority date.