Oppositions based on a trademark registered in Costa Rica.
A third-party trademark application can be opposed within a two-month period after the first publication in the official gazette.
To oppose a trademark application based on a registered trademark, we will require the following:
a) Full name, exact business address, and place of incorporation of the opposing party. This party must be the same as the owner of the registration that serves as basis for the opposition.
b) Name(s) and registration number(s) of the trademark(s) that serve(s) as basis for the opposition;
c) A Power of Attorney granted by the owner of the trademark duly legalized by a Costa Rican Consul.
d) Optional: List of countries where the trademark is registered, proof of the date of first use, advertising material, publications or others.
Oppositions based on trademarks not registered in Costa Rica ( Oppositions based on notoriety )
Costa Rican legislation provides the possibility of opposing a third-party trademark application based on a foreign trademark that is not registered in Costa Rica, alleging notoriety of the foreign mark.
As a prerequisite for such type of opposition, our law requires that we file a Costa Rican application for the corresponding foreign trademark.
Accordingly, the requirements for this type of opposition include those of a normal trademark application plus the requirements of the corresponding opposition, as follows:
a) Full name, exact business address, and place of incorporation of the opposing party (applicant in the Costa Rican trademark application).
b) Name of the trademark;
c) List of products or services which the trademark intends to protect, and desired international class.
d) A Power of Attorney granted by the applicant duly legalized by a Costa Rican Consul.
e) If the application claims Convention Priority, we will require a certified copy of the priority document, issued by the country’s Trademark Office where it was filed. Such certificate does not require legalization. Priority can only be claimed within six months from the filing date of the priority application.
f) For design trademarks, we will require an electronic version of the corresponding design. Such design can be sent by e-mail or attached to the on-line application herein.
g) Evidence of Notoriety. The opposition needs to be accompanied with copies of the registration certificates of the trademark that serves as basis for the opposition, in all jurisdictions where such trademark is registered. Also, it is advisable to show evidence of such trademark’s first use, copies of any advertisement or publications relating to the trademark –preferably international publications where dates can be corroborated- and a sample or picture of the product protected under such trademark. All such evidence is to prove that the trademark is well - known and famous in other jurisdictions. This evidence can be filed at a later time, but we will need the information of the jurisdictions where the trademark is registered in order to draft the opposition.
Oppositions to corporate names based on a trademark registered in Costa Rica.
Corporate names can be opposed based on a trademark registration in Costa Rica.
To oppose a corporate name based on a registered trademark, we will require the following:
a) Full name, exact business address, and place of incorporation of the opposing party. This party must be the same as the owner of the registration that serves as basis for the opposition.
b) Name(s) and registration number(s) of the trademark(s) that serve(s) as basis for the opposition;
c) A Power of Attorney granted by the owner of the trademark duly legalized by a Costa Rican Consul.
d) Optional: List of countries where the trademark is registered, proof of the date of first use, advertising material, publications or others.
Oppositions to corporate names based on trademarks not registered in Costa Rica. ( oppositions based on notoriety )
Costa Rican legislation provides the possibility of opposing a third-party corporate name based on a foreign trademark that is not registered in Costa Rica, alleging notoriety of the foreign mark.
As a prerequisite for such type of opposition, our law requires that we file a Costa Rican application for the corresponding foreign trademark.
Accordingly, the requirements for this type of opposition include those of a normal trademark application plus the requirements of the corresponding opposition, as follows:
a) Full name, exact business address, and place of incorporation of the opposing party (applicant in the Costa Rican trademark application).
b) Name of the trademark;
c) List of products or services which the trademark intends to protect, and desired international class.
d) A Power of Attorney granted by the applicant duly legalized by a Costa Rican Consul.
e) If the application claims Convention Priority, we will require a certified copy of the priority document, issued by the country’s Trademark Office where it was filed. Such certificate does not require legalization. Priority can only be claimed within six months from the filing date of the priority application.
f) For design trademarks, we will require an electronic version of the corresponding design. Such design can be sent by e-mail or attached to the on-line application herein.
d) Evidence of Notoriety. The opposition needs to be accompanied with copies of the registration certificates of the trademark that serves as basis for the opposition, in all jurisdictions where such trademark is registered. Also, it is advisable to show evidence of such trademark’s first use, copies of any advertisement or publications relating to the trademark –preferably international publications where dates can be corroborated- and a sample or picture of the product protected under such trademark. All such evidence is to prove that the trademark is notoriously known and famous in other jurisdictions. This evidence can be filed at a later time, but we will need the information of the jurisdictions where the trademark is registered in order to draft the opposition.
