7978 of January 6, 2000, Executive Decree No. 33743-J-COMEX, are hereby reformed, so that henceforth, the text of each article reads as follows:
"Article 2. Definitions. The following definitions are applicable to this Regulation:
( ... )
- c)Regulating Council (Consejo Regulador): the entity responsible for the direction, administration, promotion, as well as supervising and controlling compliance with the conditions of use of a geographical indication or appellation of origin in accordance with the provisions of the Law on Trademarks and other Distinctive Signs, Law No. 7978, this Regulation, the product specification (pliego de condiciones), and the use regulations.
( ... )" "Article 4.—Applicants. A producer acting on behalf of the sector, several producers, manufacturers, or artisans who have their production or manufacturing establishment in the region or locality to which the application corresponds may apply for registration, provided their activity is linked to the product or service identified with that geographical indication or appellation of origin, in accordance with the provisions established in the respective product specification (pliego de condiciones). Likewise, an entity that groups together and represents those producers, manufacturers, or artisans, or a competent public authority may apply for registration. In the case of a public authority, the application must be submitted by the respective head or legal representative, in accordance with the legislation that regulates it.
In consideration of the provisions of the preceding paragraph, the entity that groups together and represents the producers, manufacturers, or artisans may adopt the form of any organization of a collective nature or type according to the legal system. Other interested parties may be part of that entity as long as they meet the same conditions." "Article 5.—Impediments to registration. In application of articles 3 and 75 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, registration shall not be granted in the following cases:
- a)it does not conform to the definition of geographical indication or appellation of origin contained in article 2 of the Law; b) it is contrary to public order or may mislead as to the geographical origin, the nature, the manufacturing method, the characteristics or qualities, or the suitability for use or consumption of the respective products; c) it is the common or generic name of a product; d) when the geographical indication or appellation of origin is identical or similar to a trademark, geographical indication, or appellation of origin that has been registered or is in process to distinguish products or services identical or related to those designated by the appellation of origin.
( . . . )
However, a geographical indication or appellation of origin may be registered and its coexistence in the market permitted, if the Registry considers that the risk of confusion among the public and any detriment to the distinctive capacity of the trademark can be avoided, through the use on the labeling or in the presentation of the respective products of sufficient clarifying indications, so that no confusion is generated regarding the origin of the product. For these purposes, the Registry may issue, within the framework of its powers, the provisions that are necessary to regulate the use of the coexisting signs, after consultation with their holders.
In accordance with article 75 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, an appellation of origin or a geographical indication may be registered, accompanied by the generic name of the respective product or an expression related to that product; but the protection shall not extend to the generic name nor to the expression used." "Article 6.—Product Specification (Pliego de Condiciones). For the purposes of article 2 and subsection e) of article 76 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, the application for registration shall be accompanied by a technically substantiated product specification (pliego de condiciones) that shall contain, as applicable by its nature, the following information:
- a)the products or services designated by the application, indicating their general characteristics, reputation, or special qualities, such as, but not limited to: morpho-agronomic, physicochemical, organoleptic, and microbiological characteristics, which are due exclusively or essentially to the geographical environment in which they are produced, including historical, natural, and human factors; b) maps delimiting the geographical area of production or processing of the designated products or of the provision of the designated services, and the criteria followed for such delimitation; c) description of the process or method of production, processing, extraction, or obtaining of the product, or of provision of the service, indicating its general and special characteristics, or its inputs, detailing the elements that directly affect the qualities or characteristics of the product or service in question, including historical, natural, and human factors; d) description of the controls applied to ensure that the product complies with the procedures and parameters contained in each of its stages, which were established for that purpose in the product specification (pliego de condiciones), in each of its stages; e) the analyses or studies that prove the technical differences that distinguish the designated products or services from others of the same nature." "Article 7.—Use and Administration Regulations. The registration application must be accompanied by the respective use and administration regulations, which must contain, as applicable:
( ... )
- e)the official logo to be used, when applicable; ( ... )" "Article 8.—Examination of the application. Upon receipt of an application, the Registry shall proceed to examine whether it meets the formal requirements set forth in the Law on Trademarks and other Distinctive Signs, Law No. 7978, and this Regulation, for which it shall have a period of fifteen business days counted from the date of receipt of the application. If any of the formal requirements has not been met, the Registry shall notify the applicant to correct the error or omission within a period of fifteen business days from the corresponding notification, under warning of the application being considered abandoned. The Registry shall examine whether the application falls under any of the prohibition cases contemplated in article 75 of the Law on Trademarks and other Distinctive Signs, Law No. 7978.
In those cases where a prior technical study is not required to determine that the application is covered by any of the referred prohibitions, because these circumstances are notorious and evident, the Registry shall notify the applicant, indicating the objections that prevent the registration and granting a period of thirty business days, from the corresponding notification, to respond. Once the indicated period has elapsed without the applicant having responded, or if even having responded, the Registry deems that the objections raised subsist, the registration shall be denied by means of a reasoned resolution, for which it has fifteen business days." "Article 9.—Publication. Once the examination of the application has been carried out in accordance with the previous article, the Registry shall order that a notice be published three consecutive times in the Official Gazette La Gaceta, at the expense of the applicant(s). Said publication must contain the following information:
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- c)the geographical indication or appellation of origin whose registration is requested; when applicable and possible, the generic name to which the protection does not extend shall be indicated; ( ... )
- e)expressly indicate where the administrative file can be consulted.
As of the date of publication of the first notice, any person may access the file for information purposes and obtain copies of the documents contained therein. The cost of the copies shall be at the cost and expense of the interested party in accordance with the amounts established by the National Registry; additionally, the corresponding stamps and fees must be paid, in case certified information is required." "Article 10.—Oppositions to the application. Any interested person may file an opposition against the registration of a geographical indication or appellation of origin, or part of it, applying for that purpose the procedures and deadlines set forth in article 16 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, and the corresponding provisions of the Regulation of said law, as pertinent and based on the prohibitions established in article 75 of that normative body. In any case, they must argue, substantiate, and provide the necessary evidence to support their claims.
In accordance with the rules of article 17 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, an opposition based on the prior use as a distinctive sign of the terms that compose a geographical indication or appellation of origin shall be declared unfounded if the opponent does not prove having filed with the Registry the application for registration of the used trademark. The trademark application shall not be necessary when the generic nature of any of the terms composing the geographical indication or appellation of origin is alleged.
The Registry shall consolidate the files related to the registration application subject to opposition and to the application for registration of the used trademark, in order to resolve them jointly. The indicated application must be filed within fifteen business days counted from the filing of the opposition." "Article 11.—Request for technical criteria. Once the formal requirements are met and the deadline for filing oppositions and their respective response has expired, the Registry shall proceed to determine the appropriateness or not of the registration, for which it shall request the substantive technical criteria (criterio técnico de fondo) of official, higher education, scientific, technological, professional centers, or, failing that, of independent experts in the field, taking into account the nature of the product or service, to whom it shall forward the complete file. These shall provide a written technical report recommending the appropriateness or not of the requested registration. The specialists who perform this function must demonstrate technical competence, and therefore may not have been part of the team that prepared the technical product specification (pliego de condiciones), to avoid a conflict of interest. In consideration of the complexity of the application, the Registry may form a group of experts from different areas to render the technical criteria.
The required centers or experts must render their written technical criteria within a maximum period of three months from the forwarding of the file. The indicated period may be extended up to three more months, depending on the complexity of the matter. The cost corresponding to the preparation of the written technical report to evaluate the appropriateness of the registration shall be borne by the applicant. An applicant or an interested party may not participate in the preparation of the technical criteria. The designation of the entities that will render the technical criteria shall be carried out in accordance with the "Regulation for the selection and designation of technical entities for the preparation of substantive criteria in processes of registration of appellations of origin and geographical indications," adopted by the Administrative Board of the National Registry through Agreement J477 of December 8, 2016, or the regulation that replaces it." "Article 12.—Resolution. In view of the examination carried out, the oppositions and responses that may have been filed, as well as the technical criteria rendered, the Registry shall proceed to issue the final resolution. If it is decided to declare the geographical indication or the appellation of origin protected, it shall be expressly indicated if the exclusivity is granted over the entirety of the sign requested or if it is only over some of its elements. Its registration shall be ordered, observing, as applicable, the provisions of article 78 of the Law on Trademarks and other Distinctive Signs, Law No. 7978.
In the same resolution, the publication, at the interested party's expense, of a registration notice in the Official Gazette La Gaceta shall be ordered, and the use and administration regulations shall be approved. Once the applicant proves the publication, the registration certificate shall be delivered. Regarding the final resolutions of the Registry, the procedures set forth in article 25 of the Law on Procedures for the Enforcement of Intellectual Property Rights, Law No. 8039, shall be followed." "Article 13.—Registration. The recognized geographical indication and appellation of origin shall be registered in a special registry, which shall include both national and foreign ones. In the registry, it shall be expressly indicated for each distinctive sign whether the exclusivity and protection is granted over all the words that make up the sign requested, or if it is only over some of its elements. Additionally, the application number shall be indicated, and, if applicable, its respective official logo." "Article 16.—Integration of the Regulating Councils (Consejos Reguladores). The Regulating Councils (Consejos Reguladores) shall be composed of those engaged in the production, processing, marketing, or promotion of the products or services covered by the geographical indication or appellation of origin, who carry out the activity within the corresponding area. For each geographical indication or appellation of origin, there shall be a single Regulating Council (Consejo Regulador)." "Article 20.—Nullity procedure. Provided that the principles of due process are guaranteed and in accordance with the provisions of article 37 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, the Industrial Property Registry shall declare the nullity of the registration of a national or foreign Geographical Indication or Appellation of Origin, if it contravenes any of the prohibitions set forth in article 75 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, as indicated in article 81 of the same Law.
The nullity shall have a purely declaratory effect, without prejudice to rights acquired in good faith, in accordance with article 81 of the Law on Trademarks and other Distinctive Signs, Law No. 7978.
The annulment process shall be governed by the provisions established in articles 48 and 49 of the Regulation to the Law on Trademarks and article 84 of the Law on Trademarks and other Distinctive Signs, Law No. 7978." "Article 21.—Foreign geographical indications and appellations of origin. Subject to the provisions of paragraphs 4, 5, and 9 of article 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C of the Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations, Approval Law No. 7475 of December 20, 1994, the provisions established in international instruments ratified by Costa Rica, and the pertinent provisions of the Law on Trademarks and other Distinctive Signs, Law No. 7978, and this Regulation, the Registry shall register foreign geographical indications and appellations of origin that are duly protected in their country of origin.
Notwithstanding the provisions of the final paragraph of article 76 of the Law on Trademarks and other Distinctive Signs, Law No. 7978, the exemption from the payment of the established fee shall apply to the public authorities of all member countries of the World Trade Organization.
In matters not specifically regulated in this chapter, the rules of this Regulation shall apply."