Trademark Use, Registration

August 26, 2005

WHEN doing business or producing goods in Costa Rica, some foreign companies and private entrepreneurs mistakenly think that a trademark registered abroad may also be used here and be automatically protected. In general, trademark registration is very much tied to the country where the filing was made, and, with certain exceptions, the general rule is that protection is only effective if a trademark is duly registered in all countries and jurisdictions where it is or will be used.Some companies use new trademarks without even thinking of the importance of registering them anywhere. This is even more dangerous, as it can allow third parties to register the trademark first, obliging the initial user to fight for the rights to his property – a fight that in many cases can be lost.LOCAL trademark law differentiates between a trademark, generally a word, a group of words or a symbol, or a combination thereof, that distinguishes an individual’s or a company’s goods or services; and a commercial or trade name, used to identify and distinguish a business. For example, “La Gloria” and “CEMACO” are trade names belonging to businesses in Costa Rica, while “Office” is a trademark owned by Microsoft Corporation.A trademark or trade name may consist of a single word or a combination of words, as well as letters, numbers, graphic elements, logos, labels or patterns, among other elements. Notwithstanding the above, local law establishes certain restrictions: a trade name cannot be descriptive of the product or service it protects – you cannot register the word “liquor” as a trademark for a wine or spirit, for example – or be similar to or the same as an existing registered trademark.THE protection of a trademark or trade name in Costa Rica is founded mostly on being the first to file for its registration with the industrial property section of the National Registry. The first party to file will eventually, if the specific requirements are met, be the legally recognized and protected owner of the trademark in question.The registration of trademarks and trade names is voluntary, meaning it is not necessary to register them in order to use them, as long as no similar ones are already registered. Registration is for protection purposes, and allows the owner of a registered trademark to legally oppose a third party using it without his authorization.The facts that trademark registration is optional and that protection is granted to the first filer for registration of a trademark have allowed the unauthorized use and local registration of trademarks by third parties wanting to take advantage of the good reputation of trademarks others have been using in good faith but have failed to register.Several foreign companies and private entrepreneurs with interests in Costa Rica, or that had been using a trademark for their products or services here, have discovered that their trademarks were registered or were being used locally by third parties. In many of these cases, the real owners of the trademarks have had to pay considerable amounts to “acquire” their trademarks in Costa Rica, or have been obliged to modify their trademarks to be able to use them in the country.Protection is easy if the appropriate steps are taken, and knowledge makes the difference. A good understanding of this topic and a policy oriented toward registering what is yours can avoid many problems in the future.For more legal advice, contact Lang & Asociados at 204-7871 or visit www.langcr.com.

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