Overview for oppositions in trademarks registration procedures in Costa Rica
Like in many jurisdictions, in the course of a trademark registration procedure, the Costa Rican Industrial Property Registry (“Registro de la Propiedad Industrial”) conducts a formal and substantive examination of the application.
If the application is deemed acceptable for registration, it will be published or advertised for two months in the official Gazette (“Gaceta”). During that time, third-parties can object and challenge the application before the Registry. A successful opposition will stop the mark from being registered.
The party that loses the opposition may appeal the decision before the Administration Registral Board (“Tribunal Registral Administrativo”).
Grounds for Opposition
An Opposer (the party that formally opposes the trademark application) may file an opposition based on relative or absolute grounds (or both).
Relative grounds (prior third-party rights) for opposition include:
- likelihood to cause confusion, due to similarity, with a previously registered mark, trade name or application
- likelihood to be associated, due to similarity, with a previously registered mark or application
- similarity with a mark used previously by a third party with a priority right to obtain the registration
- the mark is a reproduction, imitation, translation or transcription of a well-known mark
- if the mark infringes third-party publicity rights
Absolute grounds (inherent causes) for opposition include:
- 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
- trademarks which are shape that grants the product a functional or technical advantage
- 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
- trademarks which exclusively describe a characteristic of the product
- trademarks which are an isolated color
- trademarks which are only a single letter or number
- trademarks which are not distinctive
- trademarks which are immoral or against public policy
- trademarks which ridicule or offend persons, ideas, religions or symbols adopted by national states or international organizations
- 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
- trademarks which are identical or confusingly similar to recently expired third-party registrations
- 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
Filing an opposition
The formal opposition must be filed in writing within the next two calendar months as of the first publication of the mark in the Gazette. The brief must include the factual and legal basis, as well as indication of any evidence used in support of the allegations. Should the actual evidence not be filed together with the opposition brief, it must be submitted no later than thirty working days thereafter.
The Applicant will granted a two-month period to file a response.
Additional Considerations
- It is not possible to apply for an extension of time to file an opposition.
- There are no third-party observations in Costa Rica. You must file a formal opposition.
- Is Costa Rica a first to file or first to use trademark registration system? A prior user has a priority right to obtain the trademark registration (unless use began less than three months prior to the filing date, in which case the party that is first to file prevails).
- It is possible to oppose based on an unregistered mark. If the Opposer does not have a registration, it is mandatory to file a defensive application no later than 15 days after the filing of the opposition.
- Use outside of Costa Rica is not relevant. However, our authorities do have less stringent requirements for what is considered local use. For instance, use on a website or advertising material (even if just nominal) that can be accessed from Costa Rica may be deemed local use.
