Practical tips on how to properly maintain or renew your trademark rights in Costa Rica.

Luis Acuña, trademark attorney with over 20 years of experience in the Intellectual Property field in Costa Rica, shares some tips and best practices for maintaining managing trademark renewals.

1. Absolutely make sure that the representative agent information is current!

One of the most surprising quirks about inter partes proceedings before the Intellectual Property Registry of Costa Rica (RPI), such as cancellation nullity proceeding, is that service to the adverse party often takes the form of a general publication in the official Gazette.

In practical terms, this means that a party that wishes to cancel or annul an existing trademark registration, may obtain authorization form the RPI to simply service via publication. Often these publications go unnoticed by the trademark owner!

This is perhaps the single most important aspect that makes trademark owners face difficulties with their rights in Costa Rica.

The best way of ensuring that this does not occur is to update the information on the agent-of-record for all registrations. This aspect of trademark maintenance can be updated at any time, but renewal is an ideal circumstance to 

2. Technology and business needs evolve. Trademarks can get left behind. 

Very often we come across old trademark registrations that it may no longer make sense to maintain. Trademark renewal often provides a great opportunity to review whether your current portfolio aligns with the business strategy moving forward.

Language barrier can make it difficult to audit records under such circumstances, but a trusted, local agent can provide convenient counsel. 

With the everchanging technological and business landscape, with some frequency old registrations might fall short in scope or old business practices might become outdated. In such circumstances, it is a good practice to secure the registration of a new trademark that reflects the evolution of the business, and abandon older ones that no longer serve a purpose.

For example, trademarks covering “video tapes” or “pre-recorded audio cassettes,” might not accurately reflect proper current description of the goods or services inline with the needs of business.

Timeline/Duration for Maintaining a Trademark Registration

How long do trademark rights last in Costa Rica?

Trademark and service mark registrations last for ten years and are renewable indefinitely every successive interval of ten years thereafter. For instance, if a mark was officially registered on January 10, 2000, it will be due for renewal on January 10, 2010. A renewal filed on the expiration date will be deemed to be timely.
Trade name registrations (“nombres comerciales”) and slogans (“señales de propaganda”) do not expire every ten years like trade and service marks and are deemed indefinite, until certain circumstances occur.

What is the earliest that a registration can be renewed?

A trademark or service mark can be renewed up to 12 months before the expiration date.

Is late filing possible? What is the grace period to file for renewal if I fail to do so in a timely manner?

The grace period to file for renewal is 6 months. The surcharge is an additional fee of USD$25 (for a total of $75). Otherwise, the renewal process is identical.

What is the timeframe for the certificate to be issued?

Between 2 weeks to 4 months, on average.

Back to Top

Do all registration need to be renewed every 10 years?

As a general rule, yes. Trade name registrations (“nombres comerciales”) and slogans (“señales de propaganda”) are the most notable exceptions. These registrations do not expire at 10-year intervals and, thus, there is no need to renew them periodically. The causes for extinction of trade names and slogans are subject to different rules than trademarks or service marks.

Back to Top

Requirements to Apply for Renewal of a Registration

Do I need to submit proof of use of the mark in commerce?

No. There is no need to submit a declaration of continued use in commerce or similar document.

Do I need to send the local agent a new Power of Attorney?

A Power of Attorney will indeed be required if this is the first time that you entrust a particular agent with trademark matters on behalf of the applicant/registrant.

However, Powers of Attorney are maintained indefinitely on-file by the Trademark Office. The same attorney applied one decade ago for registration or renewal of the mark should be able to assist once again, provided that the original Power of Attorney did not indicate otherwise.

Under Costa Rican law, a Power of Attorney is deemed to have been revoked if a new Power of Attorney with the same faculties was granted afterwards to a third party. While the Trademark Office does not track all Powers of Attorney granted by a particular trademark owner, it is advisable to grant a new Power of Attorney if there is reason to believe that there may be conflicting Powers of Attorney on-file at the Trademark Office for different agents/attorneys. This could be important for litigation or enforcement.

What are the requirements for Powers of Attorney?

Powers of Attorney (download our standard form here) require attestation, notarization or authentication under the internal laws of the country of issuance. Consular legalization or apostille under the Hague Convention is optional.

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.

Back to Top