Trademark Registration and Filing Guide – Costa Rica

All Power of Attorney must comply with the formalities required by the laws of the country of issuance (e.g. notarization or authentication). Apostile under the Hague Convention or legalization by the nearest Costa Rican Consulate is entirely optional. Powers of Attorney must be submitted before the peremptory deadline of 2 months after the filing date. Otherwise, the application will be deemed abandoned automatically, without possibility to reinstate.

As of November 2014, an additional month for late filing of the Power of Attorney may be obtained by filing a certificate or incorporation or certificate of good standing, in the case legal entities.

A single Power of Attorney can cover multiple applications. If the applicant has previously submitted a Power of Attorney before the Trademark Office, a new one is not usually required.

Requirements for registration of trademarks:

• Name, domicile and place of incorporation of the applicant.
• Notarized Power of attorney (see section on “Requirements for Power of Attorney” below).
• List of goods or services to be protected (latest Nice Classification).
• If priority is claimed, a certified copy of the home application or certificate of registration (no apostille or consular legalization required).

• Notarized Power of attorney (see section on “Requirements for Power of Attorney” below).
• No proof of use required.

• Notarized Power of attorney (see section on “Requirements for Power of Attorney” below).
• Assignment document signed by both assignor and assignee, a certified copy of said document or of an extract thereof, with apostille or legalized by a Costa Rican Consulate.

• Notarized Power of attorney (see section on “Requirements for Power of Attorney” below).
• Change of name document, a certified copy of said document or of an extract thereof, with apostille or legalized by a Costa Rican Consulate.

• The Trademarks and Other Distinctive Signs Law (No. 7978 of Jan. 6, 2000) & Regulations thereof
• Law for Observance Procedures of Intellectual Property Rights (No. 8033 of Oct. 12, 2001)
• Law for the Promotion of Competition and the Effective Defense of Consumers (No. 7472 of Dec. 20, 1994) & Regulations thereof

• WTO’s TRIPS Agreement
• Paris Convention for the Protection of Industrial Property
• WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
• Trademark Law Treaty

Is a pre-filing search mandatory?

No, but it is advisable to conduct a search to determine if the application may meet potential conflicts if an application for registration is filed. It is further recommended to employ the services of a professional that is familiar with ordinary Trademark Office practice to analyze the results.

Is trademark searching through the Internet available?

Only very limited trademark searching is available online through the Internet on the rnpdigital.com web site. Although the Trademark Office uses the WIPO Industrial Property Automation System (IPAS), online searching has not been fully implemented due to administrative policy.

Should an in-depth use in commerce search be conducted?

No, but it is advisable to determine if there are any senior users that have not registered their trademark and can potentially pose a threat to the application/registration.

Is trademark registration mandatory?

No. A person may adopt use of a trademark without submitting it for registration. However, a trademark registration will confer the right to act against third-party trademark infringers.

What distinctive signs can be registered as trademarks?

Under Costa Rican laws, a mark is any sign or combination of signs that can identify the goods or services of it owner(s). In particular, words or combinations of word (including names of persons), letters, numbers, figurative elements, numerals, monograms, portraits, labels, emblems, patterns, lines, combinations and dispositions of colors, and sounds.

Non-traditional marks, such as the packaging and arrangement of products, as well as their packaging or wrapping, or that of the commercial establishments may also be registered. However, these kinds of marks are subject to special scrutiny by the Trademark Office.

Can trade names be registered before the Trademark Office?

Yes. The legal and regulatory requirements are essentially the same for trademark, with the following notable exceptions: (a) the registration does not expire, unless the commercial establishment protected by the registration ceases to exist; (b) the registration cannot be transferred independently of the business of the owner; and (c) trade name registrations do not require classification under the Nice Agreement.

Can a filing basis be claimed (i.e., prior use, notoriety, etc.)?

Generally, no. Miscellaneous declarations pertaining to notoriety, prior use, etc. can be freely made in the initial application. However, such declarations are not subject to examination unless the application is met with conflicts.

Does the Trademark Office perform formal and substantive examination?

Yes. New trademarks are examined for compliance with formal and substantive requirements. Substantive examination includes an analysis of third-party obstacles to registration, including registered mark and pending applications (i.e. relative grounds for refusal) and inherent hindrances to registration (i.e. absolute grounds for refusal).

Notable examples of absolute grounds for refusal of an application for registration of a trademark in Costa Rica include:

• (a) trademarks which are the usual or common shape of the packaging of the product or a shape that is necessary due to the nature of the product
• (b) trademarks which are shape that grants the product a functional or technical advantage
• (c) trademarks which consist exclusively of signs or indications, that in standard language or commercially, are the common or usual name of the product or service
• (d) trademarks which exclusively describe a characteristic of the product
• (e) trademarks which are an isolated color
• (e) trademarks which are only a single letter or number
• (g) trademarks which are not distinctive
• (h) trademarks which are immoral or against public policy
• (i) trademarks which ridicule or offend persons, ideas, religions or symbols adopted by national states or international organizations
• (j) trademarks which may deceive the public as to the nature, mode of fabrication, quantity, quality, geographical origin or any other characteristic of the goods or services
• (k) trademarks which are identical or confusingly similar to recently expired third-party registrations (one to three years)
• (l) trademarks which reproduce or imitate, wholly or in part, the coat of arms, flag or other emblem, acronym, denomination or abbreviation of any State or international organization, without authorization of the competent authority of the State or international organization

Trademarks are registered in 4 to 9 months, on average.

What is the general registration procedure?

Most new trademark filings are examined within 2 days to 2 weeks from the filing date. If the application has any formal defects, the applicant will be invited to amend the application within a 15-day deadline (or 3 months in the case of a missing Power of Attorney). Once all formal requirements are met, the Trademark Office will examine the application for conflicts based on third party rights and absolute grounds for refusal. If any problems are cited, the applicant with have a 30-day period to submit a response. If the response does not sway the Trademark Office, the refusal will be confirmed and the applicant may choose to appeal the decision before the Trademark Office’s superior. If the application is deemed acceptable, it will be published for opposition in the official Gazette for two months. If the publication term passes uneventfully, the Trademark Office will issue the registration certificate.

What is the duration of the registration?

Trademark and service mark registrations last for 10-years and are renewable indefinitely every successive interval of 10 years thereafter.

What is the earliest that a registration can be renewed?

A trademark or service mark registration can be renewed up to twelve months before the expiration date.

What is the grace period to file for renewal?

The grace period to file for renewal is six months. The surcharge is an additional fee of USD$25 (for a total of $75). Otherwise, the renewal process is identical.

Can a change of address or change of name be recorded simultaneously?

A change of address can be recorded simultaneously without any additional costs. Changes of name need to be filed independently.