Registering a trademark in Costa Rica can be an important step for protecting your brand and intellectual property. This FAQ page answers some of the most common questions about the trademark registration process in Costa Rica.
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Trademarks allow consumers to easily identify and recognize a brand. In Costa Rica, trademarks are governed by the Industrial Property Law No. 6867.
Registering a trademark in Costa Rica provides you with several key benefits:
1. Legal Protection - A registered trademark gives you exclusive rights to use that mark within Costa Rica. This prevents others from using a confusingly similar mark that could mislead consumers.
2. Strengthens Your Brand - A registered trademark helps build brand recognition and consumer trust. It signals to the public that your brand is legitimate and legally protected.
3. Improves Enforcement - With a registered trademark, you have stronger legal grounds to take action against infringers and counterfeiters in Costa Rica. This makes it easier to protect your brand.
4. Potential for Licensing/Franchising - A registered trademark can be a valuable business asset that you can license or franchise to others, generating additional revenue streams.
5. Customs Recordal - You can record your registered trademark with Costa Rican customs authorities to help prevent the importation of counterfeit goods.
Costa Rica allows registration of the following types of trademarks:
- Word marks (e.g. "INTEL")
- Figurative marks (e.g. logos, symbols, designs)
- Combined word and figurative marks
- 3D marks (e.g. product shapes)
- Sound marks
- Certification marks
- Collective marks
Certain types of signs cannot be registered as trademarks in Costa Rica, including:
- Marks that are generic, descriptive, or lack distinctiveness
- Marks that are contrary to public order, morality, or good customs
- Marks that could mislead the public (e.g. false geographic indications)
- Marks that are identical or confusingly similar to well-known marks
- Marks that consist solely of the shape of the product itself or its packaging
The typical steps to register a trademark in Costa Rica are:
1. Trademark Search - Conduct a comprehensive search to ensure your proposed mark is available for registration and does not conflict with any existing registered or pending trademarks.
2. Application Filing - Submit a trademark application to the Costa Rican Patent and Trademark Office (Registro Nacional). This can be done electronically or by mail.
3. Examination - The trademark office will examine your application to ensure it meets all legal requirements and does not conflict with any prior rights.
4. Publication - If your application is approved, it will be published in the official gazette (La Gaceta) for 1 month to allow for potential opposition.
5. Registration - If no opposition is filed, your trademark will be registered and a certificate will be issued, granting you exclusive rights to use the mark in Costa Rica for an initial 10-year term.
The entire trademark registration process in Costa Rica typically takes 6-12 months from the initial filing date. However, the timeline can vary depending on factors such as:
- Whether any oppositions are filed during the publication period
- How quickly the trademark office processes your application
- Whether any office actions or additional information requests are issued
The required documents for a Costa Rica trademark application include:
- Completed application form
- Power of attorney that we provide to you for signature
- Copy of the applicant's identification document, passport or government identification card)
- Representation of the trademark, the logo image, logo word, word mark, etc.
- Filing fee payment receipt
Additional documents may be required depending on the type of trademark and any specific circumstances.
The official government filing fees for registering a trademark in Costa Rica are:
Application filing fee: $100-$200 USD (depending on number of classes)
- Publication fee: $50-$100 USD (depending on number of classes)
- Registration certificate fee: $100-$200 USD (depending on number of classes)
In addition to the government fees, you may also need to factor in the costs of:
- Trademark search
- Legal representation (if using a local trademark attorney)
- Potential opposition proceedings
The total cost to register a trademark in Costa Rica can range from $300 to $600 USD or more, depending on the specific circumstances of your application.
A trademark registration in Costa Rica is valid for an initial term of 10 years from the registration date. The registration can be renewed for additional 10-year terms indefinitely, as long as the trademark remains in use.
To renew a trademark, the owner must file a renewal application and pay the applicable government fees within the 6 months prior to the expiration date. Failing to renew on time will result in the trademark lapsing.
Yes, registered trademarks in Costa Rica can be assigned (transferred) to another party or licensed for use by a third party.
To assign a trademark, the new owner must file an assignment recordal with the trademark office and pay the applicable fees. The assignment will then be recorded in the trademark registry.
Licensing a trademark in Costa Rica involves the trademark owner (licensor) granting permission to another party (licensee) to use the mark, typically in exchange for royalties or other consideration. Trademark license agreements should be recorded with the trademark office to be enforceable against third parties.
There are several ways to enforce your registered trademark rights in Costa Rica:
1. Cease and Desist Letters - Send a formal letter demanding that an infringer stop using your mark and refrain from future infringement.
2. Customs Recordation - Record your registered trademark with Costa Rican customs authorities to help prevent the importation of counterfeit goods.
3. Civil Lawsuits - File a civil lawsuit against infringers seeking remedies such as injunctions, damages, and destruction of infringing goods.
4. Criminal Complaints - In cases of willful trademark counterfeiting, you can file a criminal complaint with the authorities for potential criminal prosecution of the infringers.
5. Administrative Cancellation - You can petition the trademark office to cancel a registration for a confusingly similar mark that infringes on your rights.
We need to work with our local Costa Rican trademark attorney to ensure proper enforcement of your rights.
If someone else registers a trademark that is identical or confusingly similar to your existing trademark, you have several options:
1. File an Opposition - During the 1-month publication period after a new trademark application is filed, you can file an opposition to challenge the registration.
2. Request Cancellation - If the infringing mark is already registered, you can petition the trademark office to cancel the registration on the grounds that it infringes on your prior rights.
3. File a Lawsuit - You can initiate a civil lawsuit against the trademark owner, seeking remedies such as an injunction to stop their use of the mark.
4. Negotiate a Coexistence Agreement - In some cases, you may be able to reach an agreement with the other party to allow you both to use your respective marks in a way that avoids consumer confusion.
It's important to act quickly, as trademark rights in Costa Rica are based on the first-to-file principle. Working with a local trademark attorney is highly recommended to protect your rights.
To maintain a valid trademark registration in Costa Rica, the owner must:
1. Use the Trademark - The trademark must be actively used in commerce in Costa Rica. Failure to use the mark for an uninterrupted 5-year period can make it vulnerable to cancellation.
2. Pay Renewal Fees - The registration must be renewed every 10 years by filing a renewal application and paying the applicable government fees.
3. Recordation of Changes - Any changes to the trademark registration, such as assignments, licenses, or changes in the owner's name or address, must be recorded with the trademark office.
4. Monitor for Infringement - The trademark owner should actively monitor the market for any unauthorized use of the registered mark and be prepared to take enforcement action as needed.
Failure to properly maintain a Costa Rica trademark registration can result in the registration becoming vulnerable to cancellation challenges or the loss of exclusive rights to the mark.
If you plan to use your trademark in multiple countries, it's generally advisable to seek trademark protection in each relevant jurisdiction. This is known as an "international trademark strategy."
For Costa Rica, there are a few options to consider for expanding trademark protection beyond just the local market:
1. National Applications - You can file separate trademark applications directly with the trademark offices of any countries where you want protection, including Costa Rica.
2. Madrid System - Costa Rica is a member of the Madrid Protocol, which allows you to file a single "international" trademark application that can be extended to multiple member countries, including Costa Rica.
3. Regional Systems - Costa Rica is also a member of the Central American Integration System (SICA), which has a regional trademark filing system that can provide protection across multiple SICA member states.
Working with an experienced international trademark attorney can help you develop the most effective multi-country trademark strategy for your business needs and budget.
Some of the most common pitfalls to avoid when registering a trademark in Costa Rica include:
1. Failing to Conduct a Thorough Trademark Search - It's critical to search the Costa Rican trademark registry, as well as common law usage, to ensure your proposed mark does not conflict with any existing rights.
2. Not Selecting the Proper Trademark Classification(s) - You must carefully identify all the relevant goods/services classes that your trademark will cover, as the classification impacts the filing fees.
3. Delays in Responding to Office Actions - If the trademark office issues any requests for information or clarification, it's important to respond promptly to avoid your application being abandoned.
4. Missing Renewal Deadlines - Failing to renew your trademark registration before the 10-year expiration date can result in the registration lapsing.
5. Inadequate Trademark Use Documentation - You must be prepared to demonstrate genuine use of the trademark in Costa Rica to maintain the registration.
6. Lack of Trademark Monitoring and Enforcement - Owners must actively police their mark and take action against infringers to prevent erosion of their rights.
Working with an experienced Costa Rican trademark attorney can help you navigate the registration process and avoid these common pitfalls.
A few additional points to be aware of when registering a trademark in Costa Rica:
1. First-to-File System - Costa Rica follows a "first-to-file" trademark registration system, meaning the first party to file an application for a particular mark will typically have superior rights, even if they are not the first to use the mark.
2. Well-Known Mark Protection - Costa Rica provides special protection for trademarks that are considered "well-known" in the country, even if they are not registered locally. This can help prevent registration of confusingly similar marks.
3. Trademark Squatting - There have been instances of trademark "squatters" in Costa Rica attempting to register famous foreign marks before the legitimate brand owners. Conducting thorough trademark searches is crucial.
4. Trademark Licensing Regulations - Costa Rica has specific legal requirements for recording trademark license agreements with the trademark office to ensure they are enforceable against third parties.
5. Customs Recordation - Registering your trademark with Costa Rican customs authorities can help with the seizure of counterfeit goods at the border.
Consulting with a knowledgeable Costa Rican trademark attorney is highly recommended to ensure compliance with these and other unique aspects of the local trademark system.
Registering a trademark in Costa Rica is an important step for protecting your brand and intellectual property rights in the local market. By understanding the registration process, costs, maintenance requirements, and potential enforcement options, you can make informed decisions about the best trademark strategy for your business.
Working with our experienced Costa Rican trademark attorney at the Law Firm of Melendezx & Bonilla is strongly advised to navigate the nuances of the local trademark system and ensure your rights are properly secured. With the right approach, a registered trademark can be a valuable business
Law Office of Meléndez and Bonilla
3335 10th Avenue
Avenue 10 between Calles 33 and 35
100 meters south and 250 meters east from Casa Italia
Adjacent to the Venezuelan Embassy
Barrio Francisco Peralta
San José, Costa Rica
Telephone
Local Telephone: (011) (506) 2224-2800
Toll free Telephone (US and Canada): 1-800-378-7542
9:00-5:00 Central American Time (GMT -6 or EST -1)