When doing business or producing goods in Costa Rica, some foreign companies and private entrepreneurs mistakenly believe that a trademark registered abroad is automatically protected in the country. In general, trademark registration is tied to the country where the filing was made. 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 considering the importance of registering them anywhere. This is even more dangerous, as it can allow third parties to register the trademark first, forcing the initial user to fight for the rights to their property—a fight that, in many cases, can be lost.
Local trademark law differentiates between a trademark and a commercial or trade name. A trademark generally consists of a word, a group of words, a symbol, or a combination thereof that distinguishes an individual’s or a company’s goods or services. A trade name, on the other hand, is 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. However, 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 primarily based on being the first to file for its registration with the industrial property section of the National Registry. The first party to file will, if the specific requirements are met, eventually become 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 to use them, as long as no similar ones are already registered. However, registration serves as a legal protection mechanism, allowing the owner of a registered trademark to legally oppose a third party using it without authorization.
Because trademark registration is optional and protection is granted to the first filer, some third parties take advantage of this by registering well-known trademarks locally, despite not being their rightful owners. This has led to cases where foreign companies and private entrepreneurs operating in Costa Rica have discovered that their trademarks were registered or used by third parties. In many instances, the real owners of the trademarks have had to pay significant sums to “acquire” their own trademarks in Costa Rica or have been forced to modify their branding to be able to use it in the country.
Protection is simple and effective when the appropriate steps are taken, and knowledge makes all the difference. A solid understanding of trademark law and a proactive registration strategy can help businesses avoid legal disputes and protect their intellectual property in Costa Rica.
