Globally, well-known trademarks are of a huge commercial value for trademark owners. Not only because of the forthcoming trademark recognition and reputation (which leads to a company´s very valuable asset) but also due to its effective protection against third parties, who may want to copy the trademark and take advantage over the name of the trademark owner and the trademark itself, as unfortunately, trademark infringement has been increasing and the risks too.
Trademarks, at least in Costa Rica, are protected locally, and one of the possibilities is to apply for a well- known trademark recognition, which will provide additional protection to one’s trademark, protection that cab eventually will be functional abroad.
Regarding well known trademarks, the Costa Rican Trademarks and other distinctive signs law establishes several requirements in its art. 45.
On the other hand, we also have Directive DPI-0003-2019 issued by the the Industrial Property Registry that regulates the procedure for the declaration of notorious marks, same that entered into force in September 2019.
In this regard, the provisions of the Administrative Registry Court are fulfilled, by resolution 0680-2018, of November 2018, which referred to the possibility of declaring or recognizing the notoriety of a trademark in administrative headquarters by the request of the party without the need of a litigious process, and based on articles 47 of the Political Constitution of the Republic of Costa Rica, articles 8 subsection e), 44 and 45 of the Law on Trademarks and Other Distinctive Signs No. 7978 (hereinafter Law of Trademarks) and in use of the powers conferred by Article 66 of the Regulations of the Law on Trademarks and Other Distinctive Signs, Executive Decree No. 30233-J, led to the aforementioned Directive.
The procedure for the declaration of well-known trademarks will begin with the filing of the corresponding application before the Industrial Property Registry, and the requirements established in the Directive DPI-0003-2019 must be met.
In addition to complying with the formal requirements, the applicant must provide evidence in order to determine whether the trademark meets the criteria for its recognition as a well-known trademark in accordance with Article 45 of the Trademark Law and joint recommendation No. 833 of September 1999 of WIPO and the Assembly of the Paris Union, incorporated into article 44 of the Law on Trademarks.
For such purposes the evidence and documents must refer to:
- a) The extension of their knowledge by the relevant sector of the market, as a distinctive sign of the products or services for which it was agreed.
- b) The intensity and scope of diffusion and publicity or promotion of the trademark, preferably at the local market.
- c) The years of the trademark in the market and its constant use.
- d) The analysis of production and marketing of the products that the trademark distinguishes.
- e) The duration and geographic scope of any registration, and / or any application for registration, of the trademark, to the extent that they reflect the use or recognition of the trademark;
- f) The evidence of the satisfactory exercise of the rights to the trademark, in particular, the extent to which the trademark has been recognized as well known by the competent authorities.
- g) The value associated with the trademark.
For the evidence or documents provided to be admitted and comply with the local law, all must be apostilled or legalized and with appropriate translation into Spanish, in accordance with the General Law of Public Administration.
Protect your trademark as a well- known trademark 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
