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Trademark registration and intellectual property rights in Costa Rica: what every business owner should know

El Colectivo 506
El Colectivo 506
El equipo editorial de El Colectivo 506 trabajó en conjunto para publicar esta nota. The editorial staff of El Colectivo 506 worked together to publish this article.

Does your business have its trademark registration?

If your brand isn’t registered, you’re not alone. In a recent survey we conducted in our WhatsApp community Entrepreneurs 506, as well as in other communities of entrepreneurs, we asked how many of them have registered their companies’ trademarks. Half of the community said they had, and the majority (33% of all respondents) noting that they hired professionals to guide them through the process.

That’s good news—but there are plenty of entrepreneurs who haven’t taken these steps. “No—it’s my biggest stumbling block right now” and “No it’s not even on my radar” were the two most common responses from entrepreneurs who have not yet trademarked their brand.
That leaves your company unprotected. Francisco Guzmán and Luis Asís, from the law firm FG y Asociados, explain that “the fundamental basis of industrial property is to establish clear and specific rules of the game that allow the owner of the brand to defend, control and regulate its exclusive or monopolistic exploitation.”

This is important because the brand is the public face of any business or product that we create as entrepreneurs. Francisco and Luis say that “the brand is the ideal way to identify a product or a service with respect to another of the same class or species and the business origin that produces it.”

We asked Francisco and Luis what every entrepreneur should know about registering their brand. Below are excerpts of their responses, edited for clarity.

What does registering my trademark protect me from?

The registration of a valid trademark grants its owner the exclusive exploitation of it, and allows him or her to oppose the use of it by third parties who want to generate the same or similar trademark. Only the owner of a trademark can exploit it and has the right to take action against third parties for illegal use of the same.

A registered trademark makes direct reference to the type of business activity that is carried out and to the person who carries it out. Then, the protection of the brand is granted to a specific entity, converting the brands into an asset of the owner. It becomes part of their patrimony in a quantifiable way.

When registering a brand, what do I register—the name, or the logo, or both? And how do I record the activity that I carry out under that brand?

Trademarks exist to protect and distinguish goods or services. To protect the commercial activity carried out by the holder or owner of a trademark, one registers a commercial name, which is the greatest protection that our trademark law grants.

Trademark registration can be done in many ways:

Las marcas denominativas (name brands) are those that consist of a verbal or denominative element such as: “La Estrella”.

Las marcas figurativas (figurative brands) may consist of a distinctive design only, such as the box design of the well-known Dropbox brand.

Marcas mixtas (mixed brands) can be a combination of verbal and graphic elements, such as the Coca-Cola design.

Today, thanks to technological advances, a brand can be a distinctive sound or smell.
All of these different forms of trademarks can be registered.

How do Costa Rica’s trademark classes work?

When a trademark is registered, one indicates the type of production or service it’s related to. These categories are known as classes.
The classes to register trademarks are based on what’s known as the Nice Classification, which divides products and services that can be protected into 45 different classes. These classes are then divided or structured according to the product or service to be protected in a rational and orderly manner.

Some examples of classes are as follows.

Class 01 protects chemical products for industry.

Class 03 protects cosmetics and cleaning products.

Class 05 protects medications.

Class 25 protects clothing.

Class 42 protects professional services;

Class 43 protects restaurant services;

When a trademark is to be registered, you indicate which of the 45 classes describes the business activity carried out under the trademark.

Can I register my trademark in more than one class?

Brands can be registered in several classes. In Costa Rica, trademark registrations are done one class at a time, so when you want to register in more than one class, you have to carry out separate processes for each class.

What dangers does my brand face if I choose the wrong classes?

The professional classification of products or services is vital to achieve comprehensive brand protection. The examiner will object to an erroneous classification at the time of registration—or, if the trademark was registered with the wrong classification, the protection could later be nullified. This would be the basis for a possible attacker or usurper to damage the supposed protection obtained by the trademark registration.

What are the most common reasons why a trademark registration fails?

The fundamental reason why trademarks cannot be registered is that they do not meet the distinctiveness requirement. Distinctiveness is the set of elements that make a brand reliably distinguishable from similar activities or brands. In other words, the brand has elements that make it hard to confuse with other brands… avoiding that confusion makes it impossible to register a trademark that may be similar to [an existing] trademark.

Does trademark registration in Costa Rica protect me from what happens outside of Costa Rica?

No. The protection granted when registering a trademark is territorial and does not include other jurisdictions.

What are the basic costs of a trademark registration?

Registration costs are USD 50.00 per class, and USD 45.00 for publication of the edict (in the official government daily, La Gaceta) for an average list of products/services to be protected.

If you choose to seek professional services for this process, the fees of these professionals are agreed between the parties.

Do I need a professional to register my trademark?

No, you don’t need a professional. Anyone can carry out this process in their personal capacity or for another person. However, it’s advisable to seek professional advice. A bad registration and a bad classification leaves the desired protection insufficient, or null.

As we said before, the brand is an asset that belongs to the owner. It’s also the business card and the letter of introduction and marketing for your product or service—so a lot is at stake here. That’s why we recommend professional advice. This consultancy is paid only once, and the protection that is achieved is infinite, as long as the registration of the trademark is renewed every 10 years.

It’s also important to point out that not every creation can be considered a brand, so professional advice is also a preventive tool. The process can help you obtain a solid record that can be kept unchanged over time, in the Registry and in your industry.

Asista a nuestro chat sobre este tema con un especialista en registro de marca del Registro Nacional de Costa Rica, este jueves 24 de agosto a las 3 pm en nuestra comunidad WhatsApp Emprendedores 506. Únase al grupo aquí.

About FG y Asociados: “FG y Asociados is a firm dedicated exclusively to industrial property founded more than 40 years ago. As a result of the Covid pandemic, we migrated to a completely digital platform both for interaction with clients and for procedures and relations with the Industrial Property Registry, which has placed us at the forefront in knowledge and technological advancement. This migration has allowed us to reduce operational costs for the benefit of our clients and to reduce processing times.

“We provide comprehensive advice that is not only limited to the processing of the application but also includes an analysis of the suggested brand to determine its distinctiveness, variations that must be included and the possible classes in which it must be registered.”

Contact the firm: [email protected], phones 2224-8697, 8879-8224 or 8880-9053.

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