As of August 7, 2019, in Costa Rica we now have a complete procedure to declare a trademark as well-known. It is very similar to a trademark registration because it must be filed as one, is must be published in the Official Gazette and even a period for oppositions is granted. The difference is that in addition to the formal requirements, the applicant must file evidence to demonstrate that the trademark is well-known.
The first step of the procedure is to file a well-known trademark declaration application which includes:
- Applicant’s name and address
- Country of incorporation and address of the company, if the applicant is a legal entity.
- Legal representative name, certificate of incumbency or power of attorney, depending on the case.
- Representative’s name and address, if the applicant doesn’t have an address or commercial establishment in Costa Rica.
- The trademark itself for which the well-known declaration is sought.
- The commercial establishment address and country of origin.
- List of goods and/or services.
- Proof of payment of the official fee.
Along with this information, the applicant must file the following evidence:
- The scope of the trademark’s recognition by the relevant segment of the public, as a distinctive sign for the corresponding goods and/or services.
- The intensity and scope of dissemination and advertising or promotion of the trademark.
- The age of the trademark and its constant use.
- The manufacture and marketing analysis of the products that the trademark distinguishes.
- The duration and geographic scope of any trademark registration, and/or any trademark application, which can show the use or recognition of the trademark;
- Consistency in the exercise of rights over the trademark. Particularly, the extent to which the trademark has been recognized as well-known by the competent authorities;
- The value associated with the trademark.
(All the evidence must be apostilled o legalized if it comes from a foreign country.)
After the formal and substantial review, the Trademark Office will deny or accept the application. In the first scenario, the applicant will be able to file a reconsideration request and/or file an appeal to refute the decision. In the second scenario the Trademark Office will order the publication of an advertisement that includes the information related with the application. The publication must be done three consecutive times at the Official Gazette and after the first publication, a period of two months will be granted to third parties to oppose the well-known trademark declaration application. If no oppositions are filed, the declaration will be granted, and it will be stated in the trademark registration.