Trademarks in Costa Rica

Transcription

1 SPC Legal International Services LLP, S.A. Costa Rica: Calle 36, Avenidas 4 & 6 Apdo San José, Costa Rica p f e. general@spclegal.com Trademarks in Costa Rica TRADEMARKS IN COSTA RICA As a way to introduce the topic of trademarks our firm has prepared the following general explanation that although based specifically on the registration process of trademarks in Costa Rica. TRADEMARKS A trademark is any sign or combination of signs sufficiently distinctive that allows a distinction of the goods and services of one person from those of others of the same kind or class. A trademark may be any word, phrase (including the person s names), letters, numbers, lines, colors, smells, sounds, etc. Trademarks may be in two or three dimensions. REGISTRATION PROCESS The registration process is virtually the same for all types of trademarks, certification of the trademarks, origin denominations, indications of origin, slogans or commercial advertisements, with the exception of some special requirements that have to be filed with the application for certain special types of trademarks. Depending on the jurisdiction, the registration process may take from five to six months (some approximate average registration times for some countries are: Mexico, Guatemala, Honduras, Costa Rica, El Salvador, Nicaragua, Panama, and Colombia). If a study has been requested from our office, we will carry out the study to determine the viability of the trademark application; this is a special in depth study to compare the proposed trademark for registration with other registered trademarks. If a study has not been requested our firm files the application with the warning to the applicant that the application may not succeed. In any case, before filing the application of firm makes a quick, superficial search to determine if there are any obvious similarities between the proposed trademark and any registered trademarks (this is not an in depth study, this done only to rule out obvious similarities that would make the trademark office deny the application). An in depth study by our firm prior to filing the application is

2 always recommended, fees and expenses are refunded if the studied trademark is registered through our office. The process begins with the submission to our firm of all necessary documents. Most of the times our firm receives the information first and the documentation later due to the bureaucratic procedure documents must go through. When our firm receives the information and fees we prepare in twenty-four hours (or usually the same day) the registration application. Our firm then waits to have all the required documents arrive at our office, once this has happened, we pay all applicable taxes and fees, enclose the required documents to the application and file it before the trademark office (in some urgent and special cases our firm may file the application before the arrival of required documents). Once this request is filed, the Industrial Property Registry will examine the request to ensure compliance with all requisites or documentation and that the sign is not encompassed in one of the prohibitions. If documents or requirements are missing the Registry will notify the applicant of the missing documentation and issue a term in which the applicant must file the missing documentation or requirements otherwise the request will be archived. If the request falls under a prohibition, the Registry will deny registration and notify the applicant; reconsideration recourse may be filed against the decision of the Registry, this is to ask the Registry to reconsider their decision based on an argument filed. If the Registry agrees it will change the decision and order the process to continue, otherwise the Registry will confirm the decision. If the latter happens, an appeal may be filed before the Registry to be decided by the Administrative Registry Tribunal, this appeal is usually filed with the reconsideration recourse since the date of the notification of the original decision to file it, hence, if the Registry agrees with the reconsideration recourse the appeal is automatically desisted, if the Registry confirms the decision with the reconsideration recourse the appeal is file is automatically remitted to the Administrative Registry Tribunal. If the Tribunal agrees with the appeal it will order the Registry to continue with the registration process, otherwise the Tribunal will confirm the decision; the Tribunal s decision is the final administrative decision. If the latter is the case, a Judicial Administrative Procedure may be filed to try and reverse the decision; this judicial procedure will finalize with a decision which in case it is adverse it may be appealed and depending on the matter, after the appeal a special recourse before the Supreme Court may be filed for reconsideration, this would be the final decision. It is difficult to estimate the time an administrative or judicial decision takes since this varies between jurisdictions, administrative or judicial offices and varies depending on the work volume an administrative or

3 judicial office may have. However, most administrative or judicial offices in Latin America are slow, hence it is very important to avoid delays and additional costs to make sure that the application has all the necessary requirements or documents, that no prohibition clauses apply and that no other problems are expected. If there are no problems with the request or if there is an order to continue with the registration procedure, the Registry will make a second more through examination to determine if the requested trademark is identical, similar, or if the products or services are identical or similar, or if the trademark is being used and any of those cases may cause confusion with consumers. Once again, if there are no problems the process continues, if there are problems the Registry will notify the applicant the previous information for reconsideration resources, appeal and judicial process reversal request applies. The process continues with the trademark s publication. If there are no objections found by the trademark office up to this point or if the trademark office has been ordered to continue with the process, the trademark office prepares a notice which has to be published three consecutive times in the national official newspaper. This notice must be withdrawn by the applicant (empowered attorney on his/her behalf) from the trademark office and taken to the newspaper, fees must be paid and the notice is then published. When the three consecutive publications are made, the applicant must let the trademark office know the dates of publication. From the last date of publication a term of two months runs to hear possible objections from third parties. In case there is an objection from a third party, the objection must be filed with the trademark office; the applicant is then notified of the objection and given a term to respond. The trademark office then issues a decision which is notified to all involved parties. All the information previously mentioned for recourses to the trademark office s decisions applies. If there are no objections, or if the applicant has won any objections filed by third parties, the registration process continues and the trademark office orders the trademark to be registered and recorded in the official books and that a certificate of registration is issued. At this point it is definite that the trademark will be registered.

4 The trademark office issues the certificate of registration, which must be withdrawn by the applicant or applicant s accredited representative prior payment of the certificate issuance stamps. This finalizes the registration process. Once the certificate is obtained our firm mails the certificate via courier mail to the applicant, retaining and authentic copy for our records. Our firm is attorney of record in the trademark s registration; hence our firm offers vigilance and maintenance of the trademark for all of the registration term, included in all registrations handled by our firm. REQUIRED DOCUMENTS 1- POWER OF ATTORNEY: A duly legalized power of attorney is required to act on behalf of the applicant before the Industrial Property Registry. This power of attorney must be signed before the nearest Costa Rican Consulate, and legalized with the stamps and signatures of the Costa Rican Consulate. 2- CERTIFICATE OF ORIGIN. If the trademark you wish to file for registration is already registered in the country of origin you may send a certificate issued by the Trademark Office indicating that the trademark is registered. This document does not have to be legalized. If the trademark is yet to be registered or if the certificate is not available, it may be replaced by a sworn declaration or affidavit of adoption. 3- SWORN DECLARATION OR AFFIDAVIT. If the trademark is yet to be registered or if the certificate of origin is not available, a sworn declaration or affidavit of adoption must be provided. A draft sworn declaration or affidavit is enclosed. This document is used as evidence that the applicant has adopted the trademark for its use or that it has been registered to his or her name. This document must be notarized (signature authenticated by a local public notary) and legalized before the nearest Costa Rican Consulate. The power of attorney has a provision that allows the power granted attorney to appear before a public notary and grant this sworn declaration on behalf of the applicant, however, for our office to do this, we must receive the adoption statement required by our office; hence, this document may also be replaced. 4- ADOPTION STATEMENT. The power of attorney has a provision that allows the power granted attorney to appear before a public notary and grant the required sworn declaration or affidavit on behalf of the applicant, however, for our office to do this we must receive the adoption statement required by our office in which the applicant states the same information as in the sworn declaration, however, this document is used

5 for internal reference of our office and does not need to be legalized or notarized. A draft of this document is enclosed with all other documents. 5- CERTIFICATE OF PRIORITY. If priority will be requested or claimed in the application, in accordance to the Paris Convention, then a certificate of priority is required to be filed with the trademark application. The certificate of priority may be issued by the trademark office where the latest trademark application has been filed, or this trademark office may issue a certification of the date the trademark was filed. If either of these documents are not available, a certified copy of the last trademark application filed issued by the trademark office where it was filed may replace this document. Please note that this document need not be legalized before the Costa Rican Consulate as long as it is issued by the trademark office. 5- CERTIFIED COPY OF THE LATEST APPLICATION FILED. If the certificate of priority is not available or may not be obtained a certified copy of the last trademark application filed issued by the trademark office where it was filed may be sent. Please note that this document need not be legalized before the Costa Rican Consulate as long as it is issued by the trademark office. If you have questions or comments please do not hesitate to contact us. SENDING INFORMATION The requirements must be send to our office via e mail, fax or regular mail. C/O Licda. Andrea Hector V. SPC Legal Internacional Services Calle 36, avenidas 4 & 6 edificio Don Bosco 2do piso. TEL.: Fax: ahector@spclegal.com All documents or information submitted to our office is safeguarded by attorney-client privilege and by our firm s privacy policy. If you have any questions, comments or suggestions regarding corporations please do not hesitate to contact us. NOTICE: This is intended for information purposes only and should not be regarded as an offer for services. This document contains information, privileged, confidential or copyrighted and thus protected by law. Unauthorized use or reproduction of this document is prohibited, illegal and punishable by law. SPC Legal retains all rights and property. SPC Legal is a tradename/ service mark of SPC Legal International Services LLP. SPC Legal partnership/corporation registered in Costa Rica (registered number ) is duly authorised to render legal services and regulated by the Costa Rican bar Association. A list of members of SPC Legal is available at the above registered office. The term partner is used to refer to a Costa Rican lawyer with partnership standing in SPC Legal. The term associate is used to refer to an employee or consultant standing and qualifications accepted by SPC Legal. SPC Legal¹s locations outside Costa Rica are comprised of associates of SPC Legal authorised to practice law in said jurisdiction. SPC Legal¹s United States location is merely a representative office; no legal services are rendered in the United States.