The Trademark Office
On February 1 2000, Law 7978 of January 6 2000 (Trademark Law and other Distinctive Signs) came into force. This law substitutes the Central American Treaty for the Protection of Industrial Property (CATPIP). The law gathers the principles of the Paris Convention and TRIPS Agreement, and protects the following:
- collective marks;
- certification trademarks;
- commercial names;
- emblems (designs that distinguish a company or commercial establishment);
- geographical indications; and
- origin denominations.
The law introduces a series of changes in relation to the CATPIP, adjusting legislation to accommodate modern trademark principles. Examples include the introduction of the certification trademark and protection of world famous marks (previously regulated by existing jurisprudence and the Paris Convention).
Applications can be filed by groups of producers, craftsmen or manufacturers within a region or by the corresponding public authority. An application must indicate the relevant geographical zone and a summary of the esential qualities or characteristics of the products or services. If a public authority files the application, then the fees are waived (if there is reciprocity between authorities).
Another change allows the splitting of an application into two or more, with the objective of separating the products included in the original list of goods and services. Each fractional application will retain the original application date. This kind of split can also be applied to registered marks, again where each fractional registration will retain the original registration date.
The use of geographical indications is prohibited when they are false, or when (even if they are true) they give a false or misleading idea of the origin, characteristics or qualities of the products or services. Also, it is not permitted to use the words 'class', 'type', 'style' or 'imitation'.
The new law states that the term of a trademark is 10 years and the term of a slogan, commercial name or emblem is indefinite. Trademarks can be renewed for further 10-year periods. A period of six months is granted in which to renew trademark registrations, but a surcharge must be paid. During this period, the trademark remains in force.
Trademark owners have the exclusive right to prevent third parties commercially using (without prior consent) identical or similar signs for identical or similar goods to those registered, if there is the probability of confusion. 'Acts of use' are understood to include (both within and outside Costa Rica):
- the sales, sales offer, or distribution of the goods or services with the specified trademark;
- the import, export, storage or transportation of products with the mark; and
- the use of the trademark in advertising, publications, commercial documents, or written or oral communications.
The law does permit parallel imports, since it indicates that registration of a trademark does not grant the owner the right to prohibit the use of the mark by third parties on products that have been already been marked and legally introduced for sale. Often, these products and packaging cannot be modified or altered, and cannot reasonably be said to cause damage to the owner of the registered mark.
The law grants the Trademark Office additional powers, including the cancellation (at the request of any person) of a licence agreement beacuse of defects in quality control, abuse or any type of deceit. A registered mark may be cancelled at the request of any person with a legitimate interest, or ex officio in the Trademark Office, if:
- it was registered in contravention of the law;
- the mark has become generic; or
- through lack of use.
Generally, this type of action must be brought within four years of registration. However, the cancellation of a trademark due to lack of use can be invoked within the five years following registration. In other words, the owner of the mark has five years in which to use its mark. If the use of the mark begins after five years, the mark will not be cancelled if use began within three months of the date of cancellation. If there are justifiable reasons why the mark could not be used, then the cancellation action will not proceed.
An important aspect is the protection of world renowned trademarks. This protection avoids the exploitation of the notoriety of trademarks and the possible lessening of distinctive value by non-authorized third parties. The Trademark Office can, ex officio or at the request of a third party, deny or cancel trademark registrations that reproduce, imitate or translate a world famous trademark.
With the new law, the Trademark Office must maintain a register of origin, for both national and foreign marks.
For further information on this topic please contact Jorge Arce Lara at Bufete Zurcher Montoya & Zurcher by telephone (+506 222 6633) or by fax (+506 221 9127) or by e-mail ([email protected]).
The materials contained on this web site are for general information purposes only and are subject to the disclaimer.