Guidelines for a Successful Trademark Registration in Costa Rica
Our intellectual property experts in Costa Rica share this article on tips for a successful trademark registration in Costa Rica.
Effective management of an intellectual property portfolio is crucial to protect a company's intangible assets. However, many errors can occur that jeopardize your rights, which can be avoided with proper management and Counsel on IP Management.
While there is an extensive list of factors to consider regarding a company's intellectual property, from our experience, we can highlight the following recommendations:
1. Ensure Separate Trademark Registration from Company Registration
A common misconception is that registering a company with a specific name automatically grants trademark protection. However, registering a company does not confer trademark rights. To legally protect a trademark, it is essential to proceed with the appropriate registration with the Trademark Office, separate from the company registration.
2. Website Domain vs. Trademark Registration
Similarly, owning a website domain does not make you the owner of a trademark. Before launching any website, it is advisable to complete the corresponding trademark registration to prevent unauthorized use or registration of your trademark by others and to ensure the domain used is subject to registration. Those creating a website domain should ensure that the name used is not already registered by someone else.
3. Importance of correctly using the Nice classification before trademark registration
The Nice Classification is an international system that categorizes products and services for trademark registration. Not understanding these classifications when registering a trademark can result in insufficient or incorrect protection, leading to oppositions, objections, and additional costs. It is crucial to select the correct classes to ensure that the trademark is adequately protected in the relevant business categories. Registering a trademark in the wrong class or with a general description can limit legal protection. Being precise in the description and class selection is essential to secure proper protection for the trademark.
4. Register Intellectual Property Rights Before Starting Operations
Starting business operations without first registering trademarks or any other intellectual property rights exposes the company to the risk of someone else registering a similar or identical trademark. Additionally, you risk investing in operations and marketing that cannot be used if the trademark is already registered by another party. Registering the trademark before commencing commercial activities ensures that your company has exclusive rights and helps avoid future legal issues and additional costs.
5. Ensure Local Protection by Registering Your Trademark
International companies often have agents in Costa Rica who handle the sale and/or distribution of their products or services. It is important to note that holding a trademark or right in another country does not extend protection to Costa Rica. Without registration in the country, the trademark holder risks having third parties, including distributors, register the trademark. This is a common and permissible practice that can be avoided with prior advice. Our recommendation is for trademark holders to register the trademark in their name and provide distributors with a license to sell their products/services.
6. Avoid Changes to Applications
Once an application is submitted, any changes will incur additional costs. Furthermore, modifications to a registered application will not be accepted. The applicant may need to submit a new application to make the desired changes. Therefore, it is advisable to have a complete and well-defined overview before submitting the application to avoid delays and additional costs.
7. Conduct an availability search in the correct classes
It is crucial to perform a search for availability before submitting a trademark application in the specific Nice classes related to the applicant's products or services. Understanding the business sector is key to providing accurate recommendations on the classes in which to protect your products or services. Omissions at this stage can lead to conflicts with already registered trademarks, delays in the registration process, and additional costs.
8. Schedule Trademark Renewals
Trademarks in Costa Rica have a protection term of 10 years. Once this period expires, there is a 6-month grace period to file the renewal, paying an additional fee to the Trademark Office, or the renewal can be submitted up to a year before the expiration. Failing to renew on time can result in the loss of trademark rights, allowing a third party to use it or apply for a similar trademark. It is essential to keep track of renewal deadlines and perform necessary renewals to avoid losing rights. It is crucial to highlight that, upon letting a trademark expire, you lose the associated seniority, which can negatively impact your rights and allow others to register and use it. The seniority of a trademark is essential to maintaining its value and exclusivity in the market, something many companies aim to achieve through consumer loyalty and product/service longevity.
9. Use the Distinctive Sign Within the protection term
Once registered, the distinctive sign must be used in the market within a five-year period from registration to avoid cancellation for lack of use. Additionally, the use must be consistent with the way it was registered to maintain the validity of the registration. It is important to note that if the distinctive sign is registered in multiple classes, cancellation could apply only to the class not in use, highlighting the importance of proper classification before registration.
10. Monitor Publications
Having a monitoring service for your registered trademark is highly recommended, though not mandatory. Actively monitoring your trademark portfolio helps detect and act against unauthorized use, effectively protecting your rights.
General Recommendations:
Based on the above, the following points highlight the importance of proper management of your intellectual property portfolio:
1. Adequate Trademark Protection: Having a specialized team ensures comprehensive protection of rights, managing necessary registrations, and preventing potential infringements by third parties.
2. Strategy for Defending Against Infringements: Proper advice ensures the development of strategies to defend intellectual property rights in case of infringements. This includes preparing cease and desist actions, handling legal disputes, unfair competition processes, negotiating agreements and/or licenses, and protecting intangible assets from unauthorized use.
If your company is planning to operate in the country in the short term, considering the five-year period to demonstrate use as previously mentioned, it is crucial to start reviewing the aforementioned points, including the registration process, as it is common for third parties to register trademarks of interest that do not belong to them.
Following these recommendations is essential for companies to effectively protect their intellectual property assets and minimize legal and financial risks. Professional guidance is necessary, as accurate and informed counsel is key to the secure and effective management of a trademark portfolio.
The information provided by ARIAS® is presented for informational purposes only. This information is not legal advice and is not intended to create, and does not constitute, an attorney-client relationship. Readers should not act upon this information without seeking advice from professional advisers.