Intellectual Property & Trademarks

ANDRE TINOCO & ASOCIADOS

has a strong Intellectual Property Practice in Costa Rica and Central America.

The Costa Rican Congress enacted a new law on trademarks called "Ley de Marcas y otros Signos Distintivos". The law was published in the official newspaper La Gaceta on February 1, 2000, and has been applicable since then. Regarding Registration and Protection of Copyrights a new law has been passed on October, 2000.

Previously, all issues pertaining to trademarks in Costa Rica were regulated by the Central American Treaty on the Protection of Industrial Property. Costa Rica, Nicaragua, El Salvador and Guatemala were members of the Treaty. The main idea of the Treaty was to have the same law applicable in the Central American area, but always having independent registries. The Treaty did provide for a 6 month priority term after an application was submitted in one of the member countries.

Costa Rica is also a member of the Paris Convention for the Protection of Intellectual Property, TRIPS, and WIPO, as well as other treaties and conventions that refer to trademarks, patents and copyright.

TRADEMARKS, SERVICE MARKS, SLOGANS AND COMMERCIAL NAMES

For recording trademarks, service marks, slogans and commercial names, we need the following:

Power Special of Attorney granted by the holder of the trademark, which in case of foreign companies, has to be legalized by the nearest Costa Rican Consul to the seat of the company. Only one Power of Attorney is required for each client. Attached please find a Form.

1. Name and address of the holder of the trademark.

2. Place of incorporation of the holder of the trademark.

3. The trademark to be recorded. In case of logos or devices, we need at least 18 copies of at the most 10cm x 10 cm. We prefer smaller sizes to reduce the costs of publication, i.e. 5cm x 5cm.

4. A list of the products or services protected and the corresponding international classes, according to the International Classification of Products and Services made in Nize.

5. In case a priority claim is made under the Paris Convention, we require a priority document which does not have to be legalized by the Costa Rican Consul.

6. Additionally, and in case a priority claim is not made, we may need a certification or declaration indicating that the trademark is recorded or used abroad.

TERM AND USE REQUIREMENTS

The term during which a trademark is recorded is for 10 years, renewable for additional terms of 10 years.

For the first time, use requirements are included in our trademark law. A registration can be cancelled at the request of a 3rd party if a trademark was not used during the 5 years prior to the submission of the claim, but this request will not be admitted unless made after the fifth of the recording of the trademark.

ASSIGNMENT OF TRADEMARKS

To record an Assignment Agreement, we require the following:

1. Name of the parties and their addresses.

2. Indication of the trademark and its registry number.

3. Indication of the class of the trademark.

4. Indication of the trademarks and service marks.

5. Value of the transfer agreement.

6. Agreement duly signed by both parties and legalized before the Costa Rican Consul.

7. Power of Attorney granted by either of the parties, and legalized by the nearest Costa Rican Consul (not needed if we already have a power of attorney from either of the parties).

LICENSE AGREEMENTS

To inform third parties of a License Agreement, the Agreement must be recorded in the Intellectual Property Registry.

The License Agreement must include the type of license granted, the term, and the territory, as well as the requirements for assigning a trademark stated above.

If not otherwise indicated in the License Agreement, the following applies:

1. The licensee has the right to use the trademark during the time it is duly recorded, including its extensions, in all the country, and for all the products and services protected under said trademark.

2. The licensee may neither assign the license granted nor grant sublicenses.

3. When the license granted is exclusive, the licensor may neither grant other licenses to other parties nor use the trademark or service mark itself.

LEGAL FEES AND EXPENSES

We have made the best of our efforts to reduce our fees and costs in order to maintain similar total costs as other international trademark offices. Please contact us with basic information so that we may quote.