As in many jurisdictions, proper use in commerce is essential to maintaining the validity and enforceability of a trademark registration.
1. What is the time limit to start using a trademark in Costa Rica so as to avoid cancellation due to non-use?
Trademarks must begin being used within 5 years of their registration. No cancellation action based on non-use may be submitted against a trademark registered for less than this period. After this time has elapsed, any interested third party may at any point in time request cancellation.
2. When does the 5-year period start counting?
The 5-year period refers to the period immediately prior to the date when cancellation is requested. For instance, if the action is submitted in the year 2010, the mark should not have been used since 2005.
If use of the trademark began 5 years after its registration was granted, such use will serve to avoid cancellation only if it started 3 months prior to the date of submission of the cancellation action.
3. Is it required to file evidence of use with the Costa Rican Trademarks Office in order to avoid cancellation?
There is no ordinary requirement to file proof of use before the Costa Rican Trademarks Office.
In the case of a cancellation action, even though the burden of proof to show non-use rests upon the requesting party, the registrant would be well advised to file proof of use as an exercise of its defense.
4. What kind of evidence will suffice in order to show actual use?
This depends on the particularities of the market for the goods or services protected by the registration. Incidentally, merely nominal use by itself is not ideal proof of actual use, but may be useful as supporting evidence.
It is impossible for us to provide a comprehensive listing of examples, as this would vary from case to case, type of industry, etc. Nevertheless, these are some common examples:
- Online resources, including e-commerce websites or regular websites
- Print or online catalogs
- Contracts with suppliers or manufactures, and license/franchise agreements
- Invoices and other commercial documents or sale-purchase contracts
- Tables and schedules detailing marketing expenses
- Packaging, labels, price lists, photographs or advertising material
- Listings of worldwide trademark registrations, their duration and territories covered
- Information concerning brand value, brand equity, market capitalization and corporate earnings
5. Is it required in Costa Rica to file declarations of use?
Under the current trademark legislation there is no such requirement.
6. Will it be sufficient in order to avoid a cancellation action based on non-use to shown that the trademark owner has suppliers or manufacturers in Costa Rica?
A mark is deemed to be in use when it protects products destined for export out of Costa Rican territory or relating to services for cross-border consumption outside of Costa Rica, but provided from within national territory.
7. If there is a license/franchise agreement entered into between the trademark owner and a third party, will use by the third party be considered as actual use?
Yes, use of the trademark on behalf of a licensee or any authorized third party will be considered as use by the registrant for the purpose of avoiding cancellation.
8. Is it compulsory to mark the registered goods or services with symbols such as ®?
It is not compulsory, though advisable. Normally marking is done with the text "Marca Registrada" ("Registered Mark") or the symbol ®.
