What constitutes a trademark?
Trademarks include a vast segment of intelectual property; given they engulf practically any intelectual manifestation of the human mind.
Under Costa Rican Law, a trademark is any distinctive sign or combination of signs capable of identifing certain goods or service as those produced or provided by a specific person or enterprise
Letters, words, numbers, and figurative elements constitute the most common types of signs that can be awarded the protection of a trademark; even though three-dimensional signs, music, fragrances and colors, as well as packaging and wrappers are also admisible.
There are different kinds of trademarks that each of these signs can fit into, depending on what they are intended to protect; whether they are service trademarks, trade names, or advertisment slogans, for example.
What are the main functions of a trademark?
¯ To warrant the consumer a form of distinguishing between products.
¯ To allow enterprises to differentiate their products from one another.
¯ To project the image and reputation of a given enterprise; they serve as powerful marketing tool.
¯ To provide a direct source of revenue by means of royalties or licensing; they usually represent a determining factor in franchise agreements.
¯ To represent a business asset, where the value of a trademark can represent the actual success of an enterprise
¯ To encourage enterprises into investing, mantaining and improving product qualiites
What types of trademarks are recognized and applicable in Costa Rica?
As previously stated, there are several diverse types of trademarks depending on what the actual trademark intends to distinguish.
¯ Product trademarks: As their very name indicates, these are signs that protect and distinguish amongst products; their term of protection is of 10 years. "Coca-Cola", "Nike", and "Nokia" are examples of such trademarks.
¯ Service trademarks: These signs identify specific services, and are also valid for 10 years upon registration. "American Airlines", "Marriott", and "Citibank" are examples of this kind of trademarks.
¯ Trade names: These are signs that allow for a distinction amongst establishments or business premises; and their term of protection is indefinite.
¯ Slogans: Their main purpose is to promote an already existing trademark; and thus are designed to escort the validity of the trademark to which they are associated. Some examples are: the "Just do it" slogan used to promote "Nike" brand products, or the "Always" slogan for "Coca-Cola".
Does Costa Rica follow the Nice Classification?
The Nice Classification is a multilateral international treaty administered by the World Intelectual Property Organization. It consists of a classification of goods and services for the purposes of registering trademarks and service marks into clases. There are 34 clases of goods and 11 clases of services described in the Nice Classification.
A class is a set of products or services that relate to each other, or have a common feature of their utility function or use, and are grouped accordingly. The significance of such a classification lies in the need to organize the different trademarks and provide a protective environment for each of them.
The Nice Classification compromises about 10,000 indications refering to goods and 1,000 refering to services, and it is currently the most widespread classification criterion.
Our current legislation obligates for any applicant to indicate not only the products the desired trademark vows to protect, but also the class or classes to which such products relate to. It is possible to apply for trademark protection in several clases at once, in order to achieve a greater socope of protection.
The full standings for the Nice Classification can be found at:
http://www.wipo.int/classifications/nivilo/nice/index.htm?lang=EN What are the requirements for a trademark application in Costa Rica?
¯ Applicantïs full name, nationality & address.
¯ If the applicant is a legal person, then its address and place of foundation, as well as legal representativeïs name, address and capacity are required.
¯ If the applicant is foreign, then it must include the name and address of a representative in Costa Rica.
¯ If the applicant is not the intended owner of the trademark, then a Power of Attorney must be attached.
¯ Indication of whether the trademark is designed to protect products or services.
¯ The trademark itself; up to four copies of the trademark can be requiered were it to consist of or contain a specific design.
¯ A translation of the meaningful word elements found in the trademark, if these are derived from any other language than Spanish.
¯ A clear and precise list of products or services that the desired trademark intends to protect; grouped by classes according to the 9th edition of the Nice Classification.
¯ Proof of payment of a standard fee of $50 per class, as well as other government fees and surcharges.
What are the different stages in the procedure of a trademark application in Costa Rica?
This process consists of a presentation stage; an examination phase; an opposition term, and, finally, the registration itself.
¯ The presentation stage is initiated by the filing of the trademark application, proof of payment and all the other documents listed above before the Patent and Trademark Office (a division of the Industrial Property Registry, and, hence a sub-division of the National Registry itself).
¯ The examination phase consists of substantive and formal examinations on behalf of the PTMO. Any defects observed by the PTMO will result in an Official Action, and must be remedied by the applicant, under penalty of abandonment.
¯ As for the publication of the trademark application, a notice must be printed during three consecutive days in the Official Gazette; that is, of course, once the examination phase has concluded and the PTMO has allowed the process to continue.
¯ Starting from the date of publication, there exists a two month term in which any interested party can raise an opposition against the trademark application. A single opposition will result in the birth of a new process parallel to the trademark application before the PTMO. Once all arguments and evidence are provided by both parties, the PTMO will issue a resolution which shall either order a rejection of the trademark application, or order the registration process to continue.
¯ On the contrary, if there exists no opposition to the trademark application, and the two month term has already expired, the PTMO will order the registration of the trademark and issue a formal certificate of registration.
What rights are related to the registration of a trademark in Costa Rica?
A registered trademark conveys its owner the exclusive right to use such a trademark in the market for as long as the validity term lasts. This implies that a registered trademark can effectively prevent others from using the trademark without permission, since the sale or licensing of trademarks in exchanges for royalties is accepted in Costa Rica. There exist no annual fees necessary in order to maintain the registration of a trademark, or avoid it from becoming void.
Regarding the expiration and renewal of trademarks in Costa Rica.
Product and service trademarks have a validity of 10 years; after which all rights related to such a trademark expire. The Costa Rican legislation allows for any trademark owner to renew his rights for a complete new term of 10 years. The application for a trademark renewal must occurr at the least, one year prior to the actual expiration date. The PTMO is currently awarding a grace period of 6 months after this specific date in which any application filed in this sense can be accepted if an additional fee is met.
All renewal applications must include:
¯ Name and address of the owner (and/or of the assigned legal representative)
¯ Registration number of the trademark object of the renewal
¯ A Power of Attorney, were this renewal application to be filed by someone other than the original legal representative or owner. (If the applicant were the same as in the original trademark application, then a simple reference to the original file and registration number will suffice).
¯ Proof of payment of the standarized fee ($50)
