Article 9 of the Trademark Law of Costa Rica literally provides:

ARTICLE 9.- Application for registration.

The application for registration of a mark shall be filed with the Registry of Industrial Property. It shall contain the following:

a.Name and address of the applicant.

b.Place of organization and domicile of the applicant, when the applicant is a legal entity.

c.Name of the legal representative when appropriate.

d.Name and address of the representative in the country, when the applicant does not have a domicile or an actual and effective mercantile establishment in the country.

e.The mark subject matter of the application, when it is a denominative mark, without a special writing style, form or color.

f. A reproduction of the mark, with the number of specimens determined by the Regulations to this Law in the case of denominative marks with special writing style, form or color, or figurative, mixed or three-dimensional marks with or without color.

g. A translation of the mark, when it is constituted by any denominative element with a meaning in a language other than Spanish.

h. A list of the names of the goods or services for which the mark is used or is going to be used, grouped by classes in accordance with the Nice International Classification of Goods and Services, indicating the class number.

i.The documents or the authorizations required in the cases foreseen in subsections m), n) and p) of Article 7 and subsections f) and g) of Article 8 of this Law, when appropriate.

j.Voucher of payment of the basic fee established.

Whenever the applicant wants to claim the priority of a previous application, the applicant shall submit the declaration of priority and the documents specified in paragraphs third and fourth of Article 5 of this Law, together with the application for registration, within the fixed terms. The declaration of priority shall contain the following data:

a.The name of the country or regional office where the priority application was filed.

b.The date of filing of the priority application.

c.The number of the priority application, if assigned.

Please find the format of the Power of Attorney in the main menu
of our website.

Draft of the Power of Attorney

After the formal and substance examinations have been conducted by the Trademark Registry, this office provides a notice to be published in our Official Journal, as provided in Article 15 of the Trademark Law, as follows.
 

ARTICLE 15.- Publications of the trademark application

Once the examinations have been conducted in accordance with Articles 13 and 14 of this Law, the Registry of Industrial Property shall order to announce the application by means of a publication of a notice in the official journal three times, at the expense of the interested party, within fifteen days after giving notice to the party.

The notice to be published shall contain:

a.Name and domicile of the applicant.

b. Name of the representative or agent, if any.

c. Date of filing of the application.

d. Application number.

e. Mark, as indicated in the application.

f.List of the goods or services to which the mark shall be applied, and the respective class.
 

This publication is made to inform third parties about the application for a new Trademark Registration. Such third parties can file an opposition to it within 2 months counted from the date of first publication of the notice, as provided in Article 16 of the Trademark Law:
 

ARTICLE 16.- Opposition to registration

Any interested person can present any opposition against registration of a mark within the term of two months counted from the first publication of the notice announcing the application. The opposition shall indicate factual and legal foundations, and include the relevant evidence offered.

If the evidence was not included with the opposition, it shall be produced within thirty calendar days following the date of filing of the opposition. The applicant shall be given notice of the opposition, being granted a term of two months counted from the date of notice to answer it. Upon expiration of this term, the Registry of Industrial Property shall adopt a resolution on the application, even if the opposition was not answered.

ARTICLE 17.- Opposition based on an unregistered mark

An opposition based on the previous use of the mark shall be declared inadmissible, if the opposing party fails to certify that it had filed application for registration of the mark used with the Registry of Industrial Property. The Registry shall accumulate the records concerning the application for registration subject matter of the opposition and the application for registration of the used mark, in order to solve both cases together.

The opposing party shall file the opposition within fifteen days counted from the filing of the application. When the previous use of the mark of the opposing party has been duly proven, and the requirements fixed in this law for registration of the mark have been met, registration shall be granted. Registration of the trademark against which it may be possible to create confusion can also be granted. In such case, the Registry can limit or reduce the list of the goods or services for which each of the marks can be used, and establish other conditions concerning the list, as necessary to prevent risks of confusion.

ARTICLE 18.- Resolution

In case of filing of one or more oppositions, they shall be resolved, together with the main application, in a single act, by means of a duly founded resolution. When a full denial of the registration subject matter of the application is not justified or the opposition filed is limited, and the joint existence of both marks cannot cause confusion, registration can be granted for only some of the goods or services indicated in the application or with an express limitation concerning specific goods or services.

The registration of a mark shall not be denied based on the existence of a previous registration, if the defense foreseen in the second paragraph of Article 39 of this Law is invoked and admitted.

If no opposition is filed within the term established for the purpose, the Registry of Industrial Property shall proceed to register the mark. If the Registry of Industrial Property resolves to grant the registration, it shall give notice of the resolution to the applicant for the purpose that the applicant may proceed to pay the complementary fee established. If the applicant has failed to pay the fees within the month following the date of notice of the resolution, the resolution shall be declared void and the case shall be closed without further proceeding.

ARTICLE 19.- Certification of registration

The Registry of Industrial Property shall issue to the holder a certificate of registration of the mark, which shall contain the data included in the appropriate register and those established by the regulatory provisions.

The trademark renewal proceedings are regulated by Articles 20 and 21 of the Trademark Law, which are literally read as follows:

ARTICLE 20.- Term and renewal of the registration

The registration of a mark expires in ten years, counted from the date it was granted. The registration of the mark can be renewed indefinitely for successive terms of ten years, counted from the previous expiration date.

ARTICLE 21.- Procedure for renewal of registration

The renewal of registrations shall be made by filing with the Registry of Industrial Property the appropriate application, which shall contain:

a.Name and address of the holder.

b.Name of the registration to be renewed.

c.Name and address of the agent in the country, if required, but it shall only be necessary to certify the authority of the agent, when he/she is different from the one designated in the registration to be renewed or in the previous renewal; if the agent is the same, the application shall indicate the file, the name of the mark and the number of the filing or the registration for which the power of attorney was submitted.

d.A list of the goods or services in accordance with the desired reduction or limitation, if the applicant wishes to reduce or limit the goods or services comprised in the registration to be renewed. Goods or services shall be grouped by classes in accordance with the International Classification de goods and services, indicating the number of each class.

e.Voucher of payment of the established fee.

The application for renewal can only refer to one registration and shall be filed within the year before the expiration date of the registration to be renewed. It can also be filed within a term of grace of six months following the expiration date, in which case a specific extra charge shall be paid in addition to the appropriate renewal fees. The registration shall continue being in full force and effect during the term of grace.

The renewal of the registration of a mark produces effects from the date of expiration of the previous registration, even if the application for renewal has been filed within the term of grace.

Upon compliance with the requirements foreseen in paragraphs first and second of this article, the Registry of Industrial Property shall register the renewal without further proceeding. The renewal shall not be the subject matter of a substantial examination or publication of a notice.

Draft of the Assingment Document

The requirements and documents established in our country to conduct this type of proceedings are duly set forth in Articles 31 and 32 of the Trademark Law, which provide:

ARTICLE 31.- Transfer of the mark

The right to a registered mark or one being processed for registration can be transferred inter vivos or mortis causa. The transfer shall be set forth in writing and registered in order to generate effects with regard to third parties. The applicant of the registration of the transfer shall pay the appropriate fees established in this Law.

All applications for transfer of marks shall contain the information listed in subsections a), b), e), d) and e) below, and be accompanied by the documents listed in subsections f), g) and h).

a.Name and address of the parties.

b.Indication of the mark.

c.Indication of the mark classification.

d.Indication of the goods or services protected by the mark.

e.Assessed value of the transfer.

f.Transfer document signed by both parties, to be duly legalized and authenticated by the Costa Rica consul, if required.

g.Power of attorney of any of the parties, which has to be duly legalized and authenticated by the Costa Rica consul, if required. If the representative has already acted on behalf of such party, the indication of the name of the mark and the number of the application or the registration in connection with which the power of attorney was submitted.

h.Payment of the appropriate fees.

ARTICLE 32.- Change of name of the holder

The persons that have changed or modified their name, corporate name or denomination in accordance with the law shall make a request to the Registry of Industrial Property in order to make the respective change or modification in the entries of the distinctive signs that are registered in their name.

The request of this change or modification shall include:

a.Name and address of the applicant.

b.Indication of the signs and the application or registration number.

c.Specification if the modification involves a change of name or a merger of companies, among other changes.

d.Indication of the new name of the applicant.

e.Power of attorney issued by the company resulting from the change, duly legalized and authenticated.

f. Document setting forth the change, duly legalized and authenticated.

g.Voucher of payment of the respective fees.

After conducting the study of this change as requested, the Registry of Industrial Property shall give notice to the interested party, which shall be published only once in the official journal, at the expense of said party.

Upon said publication, the Registry of Industrial Property shall issue the appropriate certificate of change or modification.

For application of Licenses of Use, our Trademark Law provides:

ARTICLE 35.- License of use of the mark

The holder of the right to a registered mark or a mark being processed for registration can grant a license for its use. Said license shall be registered in order to produce effects with respect to third parties. If registered, it shall be necessary to pay the registration fees at the rate established in Article 94 of this Law.

The application for registration of the license of use of the mark shall include information about the type of license, the term of effectiveness and the territory covered, and meet the requirements established in the second paragraph of Article 31 of this Law.

The application for registration of the license of use of the mark shall be accompanied by the license documents signed by both parties, which documents, if required, shall be duly legalized and authenticated by the Costa Rican Consul.

The documents specified in subsections b), c), g) and h) of Article 31 of this Law shall also be submitted.

Unless otherwise stipulated, a license agreement shall be governed by the following rules:

a.The licensee shall have the right to use the mark during the whole term of effectiveness of the registration, including renewals, throughout the national territory, and with respect to all the goods or services for which the mark has been registered.

b.The licensee cannot assign the license or grant sublicenses.

c.When the license has been granted on an exclusive basis, the licensor cannot grant other licenses with regard to the same mark or the same goods or services; or use the mark by himself/itself in the country in connection with those goods or services.

A PCT Patent Application in Costa Rica requires, in addition to the international documents of the PCT Patent that have to be submitted, a Power of Attorney, a document of assignment of the inventors in favor of the holders (if the creators are not the applicants), a translation into Spanish of the description of the invention, the claims and the drawings.

Upon delivery of all the documents required, the Patent Office of Costa Rica shall issue a notice, to be published three times in our Official Journal.

A term of two months, counted from the date of the fist publication, is granted to third parties, to file any opposition they may have.

ARTICLE 1. - Inventions

1.Invention is every creation of the human intellect that can be applied to industry, that complies with the patentability conditions set forth in this Law. It can be a product, a machine, a tool or a manufacture procedure, and shall be protected by a letters patent:

(So corrected by Notice of Misprints published in “La Gaceta” No. 55 of March 17, 2000).

a)Discoveries, scientific theories, mathematic methods and independently considered software.

b) Purely esthetic creations, literary and artistic works.

c) Economic advertising or business plans, principles or methods and those referred to purely mental or intellectual activities or to gaming matters.

d)The juxtaposition of known inventions or mixtures of known products, their variation in form or use, dimensions or materials, unless it is a combination or merger that cannot operate separately or when the characteristic qualities or functions thereof have to be modified in order to obtain an industrial result that is not obvious to an expert in the field.

3.Vegetal products shall be protected by a special law.

4. The following are excluded from patentability:

a) Inventions which commercial exploitation has to be objectively and necessary prevented to protect public order, morality, the health or life of persons or animals, or to preserve plants or avoid serious damages to the environment.

b) Diagnosis, therapeutic and surgical methods for treatment of persons or animals.

c) Plants and animals.

d) Essentially biological procedures for production of plants and animals.

(So amended by el Article 2.a) of Law No. 7979 of January 6, 2000).

In accordance with our law, the inventions that can be registered as patents in Costa Rica are:

ARTICLE 2. - Patentable Inventions

1.An invention can be patented if it is new, has inventive level and is susceptible of industrial application.

2.(Superseded by Article 4 of Law No. 7979 of January 6, 2000).

3.An invention is new when it does not exist previously in the state of the art. The state of the art shall cover everything disclosed to or made available to the public anywhere in the world and by any means, before the date of filing of the patent application in Costa Rica or, as the case may be, before the applicable priority date. The state of the art shall also cover the contents of other patent applications being processed before the same Registry of Industrial Property, which filing date or, as the case may be, priority date is previous to the date of the application to be considered, but only to the extent that this content is included in the application of such prior date when published. The state of the art shall not cover anything disclosed within the year before the date of filing of the application in Costa Rica or, as the case may, within the year prior to the applicable priority date, provided such disclosure results, directly or indirectly, from acts performed by the inventor himself or his assignee or from a breach of contract or an illicit act committed against either.

(So amended by Article 2.b) of Law No. 7979 of January 6, 2000)

4.The disclosure resulting from a publication made by an industrial property office in the proceedings to grant a patent, shall not be covered by the exception set forth in the third paragraph of this Article, unless the application subject matter of said publication has been filed by a person not entitled to be granted the patent or the publication has been made inappropriately.

(So amended by Article 2.b) of Law No. 7979 of January 6, 2000)

5.It shall be considered that an invention has inventive level if for a person with average skill in the respective field the invention is not obvious or evidently derived from the relevant state of the art.

6.It shall be considered that an invention is susceptible of industrial application when the object can be produced or used in the industry, understood in its broadest sense, to encompass, among others, agriculture, mining, fishing and services.

7.All products or procedures that meet the patentability requirements established in this law, regardless of the place of the invention, the technology field or whether the products are imported or produced in the country, shall be patentable inventions.

(So amended by Article 2.b) of Law No. 7979 of January 6, 2000)

The requirements to be met by every Patent Application in Costa Rica are regulated in Article 6 of the Patent Law.

ARTICLE 6. - Application

1.The patent application shall be filed with the Registry of Industrial Property, accompanied by a description, the claims, the drawings necessary to understand the invention and an abstract of these documents. It shall also be accompanied by the voucher of payment of the filing fees established in the Regulations to said Law.

2.When the applicant wants to claim the priority granted by a previous application filed in another country, the application shall do it within twelve months following filing of said application in the country of origin.

(So amended by Article 2.c) of Law No. 7979 of January 6, 2000)

3.The application shall contain the name and other data established in the Regulations for the applicant, the inventor and the representative, if applicable, and the title of the invention. If the applicant is not the inventor, the application shall include a statement justifying the right of the applicant.

4.The description shall specify the invention in a manner sufficiently clear and complete to permit its evaluation and its implementation by a person skilled in the relevant technical field, and, in particular, it shall expressly describe the best manner known to the applicant for implementation of the invention, giving one or more specific examples, if possible, and identifying as the case may be, the one that would give the most satisfactory results in its industrial exploitation.

5.The text of the first claim shall determine the scope of protection. The other claims shall be subordinated to the first and may refer to particular embodiments of the invention. The description and the drawings can be used to interpret the claims, which shall be clear and concise, and entirely supported on the description.

6.The abstract shall include a synthesis of the matters specified in the description, the claims and the drawings, if any, and, as the case may be, include the formula that best characterizes the invention. The abstract shall permit to understand the technological problem and the essence of the solution provided by the invention, as well as its main use. The Regulations shall detail other requirements of the abstract.

7.The abstract shall be used exclusive for technical information purposes and not to interpret the scope of protection.

8.If following registration of a patent, the Ministry of Health, in the case of medications, and goods and substances for therapeutic application, or the Ministry of Agriculture and Livestock in the case of agrochemicals, verifies that the process or the product does not comply with the original conditions of authorization, and at the request of the Ministry, the manufacture, importation and commercialization of the product shall be prohibited, without liability for the State.

(So amended by el Article 2.c) of Law No. 7979 of January 6, 2000)

9.All patent applications filed with the Registry shall be classified using the International Patent Classification.

 Draft of the Power of Attorney

ARTICLE 25.- Definition of industrial drawings and models and definition of utility models.

1.For purposes of this Law, industrial drawing shall be every gathering of lines or colors, industrial model, every plastic shape, associated or not to lines or colors, provided such gathering or shape gives a special appearance to an industrial or crafted product and can be used as a type for its manufacture. Utility model is every new layout or form obtained or introduced in already known tools, work instruments or utensils, which may permit an improved performance or a special function for the use thereof.

2.The protection granted by this law does not include the elements or features of the industrial drawing and model solely used to obtain a technical or functional effect.

(So amended by Article 2.g) of Law No. 7979 of January 6, 2000).

3.The protection granted by this law neither excludes nor affects the rights derived from other legal provisions, in particular provisions on copyright in force.

4.The holder of a protected industrial drawing and model shall have the right to prevent third parties to manufacture, sell or import without his/its consent any goods that bear or incorporate a drawing or model that is a copy or fundamentally a copy of the protected drawing or model, when such actions are performed for commercial purposes.

(So amended by el Article 2.g) of Law No. 7979 of January 6, 2000).

In accordance with the Regulations to this Law, the applications for registration of Industrial Models and Utility Models shall be filed together with the following.

ARTICLE 36.- Contents of an application for registration

1. The application for registration of an industrial drawing or model shall be addressed to the Registry and contain:

a) Name, domicile and address of the applicant.

b) Name and address of the representative, if any.

c) Name and domicile of the creator of the industrial drawing or model, if not the applicant.

ch) Application for registration of the industrial drawing or model.

d) Accurate indication of the type or kind of objects or products to which the drawing or model is going to be applied.

e) Class or classes of such objects or products.

2. The application shall be accompanied by:

a) Five graphic representations of the industrial drawing or model, when a single class is covered, accompanied by an additional representation for each additional class covered.

b) A summarized description of the model drawing or model, which shall not exceed one hundred words.

c) Voucher of payment of the filing fees established, in accordance with the number of classes covered.

Asociations

Members of INTA (International Trademark Association).

Costa Rican Institute of Lawyers in intellectual Property Area.

We are in Harmony with Nature

[Home] [Profile] [Legal Services] [Trademarks and Patents] [Email Us]