Until recently, the only option in Costa Rica for a mark to be declared as notorious was to invoke this condition within a trademark process. The issue of notoriety was dealt with “accessory” to a main process and the processing of these declarations was not independent. It was thanks to the entry into force of Directive DPI-0003-2019, that in Costa Rica the necessary regulation of this process was established, thus innovating the panorama of Intellectual Property procedures.
This process begins with a formal application, which must contain the basic information of the mark, as well as its owner. It is important to note that this process can be declared in trademarks already registered (or in the process of registration) or in signs that have not been registered, as established by the relevant Guideline. The key aspect of this type of process is that the acceptance of the application depends on the evidence of notoriety provided to the writing. In other words, it is not enough for a trade mark owner to apply for this recognition, but its significance for trade and consumers must be conclusively demonstrated. In view of this, Directive DPI-0003-2019 lists a guide of evidence elements that must be contained in an application for notoriety (mainly, the presence and scope of application of the mark, its value, diffusion, use, age, intensity and recognition by the consumer public). If the application is admitted, it will be published in the Official Gazette and if there are no oppositions by third parties within the following two months after publication, a declaration of notoriety of the sign will be made.
We must consider that this process, being very new in the country, will face interesting challenges at the beginning of its implementation. In the first place, we find the processing of the declaration of notoriety and the positions adopted by the registrars in these cases, whose role will be key in determining what is or is not notorious. Likewise, we find the complexity involved in compiling strong evidence demonstrating the notoriety of a trademark, since the registrar’s criterion will be key in assessing the weight of each piece of evidence provided in the application.
Finally, this is a good time to witness the birth of a new legal tool at the national level that, if properly regulated and implemented, will serve as a means of additional protection of Intellectual Property in Costa Rican lands.
Cristina Mora Granados
Associate
García & Bodán
Costa Rica