Distinctiveness and coexistence agreements for trademarks in Costa Rica

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Msc. Karla Corrales.

1. The distinctiveness of trademarks in accordance with Costa Rican law and case law.

A trademark to be considered as distinctive in Costa Rica, should be clearly identifiable and recognizable both by consumers and by producers in the market, and distinctiveness has to be an indispensable element of it.

In that sense, the basic function of a trademark is to distinguish the products or services of one company or person from those of other competitors. Hence, the lack of distinctiveness of a trademark prevents it from performing that basic function and the application for registration of a sign which is not distinctive, will regularly be refused.

Article 7 of the Trademarks and Distinctive signs Law establishes that:

inadmissible for intrinsic reasons may not be registered as a trade mark consisting of any of the following:

  1. g) do not have sufficient distinctive character for the product or service to which it applie

In order to be protected, a trademark must be distinctive as our Administrative Registration Tribunal has indicated:

distinctiveness is a feature that allows consumers to freely take their decision to consumption, achieving a sufficient distinctness of some goods over other ones available on the market and that are similar to or likely to be associated. And, the distinctiveness of the mark must be determined depending on its application to the object of protection, so that the more generic is the sign in respect of such goods or services, the less distinctive it will be

There have been two accepted types of distinctiveness in Costa Rica:
  1. Intrinsic Distinctiveness: That which applies to the sign itself and gives the product or service its own identity. The less relation that the meaning of the mark has from the products or services it protects, the more distinctiveness that trademark has.
  2. Extrinsic Distinctiveness: That which helps consumers distinguishes the goods or services of a company with respect to other of the same nature but belonging to the competitors in the market.

2. The coexistence of trademarks in accordance with Costa Rican law and case law.

Coexistence of trademarks is not allowed even when the parties have agreed on using their similar trademarks in the country.

The aforementioned because it can generate a risk of commercial association and confusion in the market for the customers.

In this sense, the Administrative Registration Tribunal has said:

“(…) The confusion in the market can have different degrees that can go from the similarity between two or more marks to the identity between them; hypothesis that must be proven to verify, not only the ideological closeness between the marks, but the scope of coverage of the registration of the registered sign, that is, the nature of the products or services that identify the conflicting marks in relation to the activity that they will identify. In any case unregistrability prevails in those where the proposed signs are intended to be for the same goods or services or these are connected to said activity, or associated or associable to those, as provided for in Article 25 of the Trademark Act and 24 subsections f) of the Regulations”.

As a conclusion, our law and case law does not allows by any means that two different trademarks from a different owners, coexists in the Costa Rican market as the important thing is that the consumer has no conflict at the time of recognize the trademark and link it with a commercial name or business.

The prohibition remains even when the parties have executed a coexistence agreement, as it is not valid in our country.

3. The possible legal actions to execute.

3.1. In Costa Rica the trademark system protects the companies intellectual property related to trademarks, until the trademark is duly registered not before. 

This means that it does not matter how many time or how famous a trademark is in the market, if a third party files a registration process of such trademark, its previous use is not valid to stop such registration, as the right is born with the inscription.

3.2. If a previous trademark is duly registered and in use by its owner, there is no possibility to obtain an annulment of such registry, as they got it in a legal way. 
3.3. If some uses a duly registered trademark will be subject of a sue for trademark infringement only if they are using a trademark that does not belongs to them without having a trademark use license agreement.

Otherwise, there is no trademark infringement as they are using their registered trademark, and selling original products.

3.4. Non use cancellation action can only be filed if the owner of a trademark has not been using its trademark in the Costa Rican market for at least 5 year. 

Evidence of use must be filed by the owner of the trademark, as the Administrative Registration Tribunal has determined in several of their resolutions.

Protect your trademarks as it is an invaluable asset for your company, and with the assistance of our professional team it will be an easy process.

 Should you require legal counsel in relation to this and other topics do not hesitate to contact us on: info@eproint.com

Tags: costaricatrademarks, Law, trademarks
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