FAMOUS MARKS
and the trademarks offi ce have stated a diff erent criterion to declare the notoriety of a trademark.
“THE MARK IS CONSIDERED NOTORIOUS IF IT IS NOTORIOUS IN THE MEMBER COUNTRY OF REGISTRATION OR USE AND IS NOT CIRCUMSCRIBED TO THE ‘NATIONAL TERRITORY’.”
According to the Civil Chamber, in a case where the notoriety of restaurant chain TGI Friday’s was discussed, to declare the notoriety of the restaurant it was necessary to prove the notoriety of the restaurant in Costa Rica. (Decision number 34-2011 of the T ird Civil Court of San José, in the case of TGI Friday’s of Minnesota Inc v Inversiones Huezo Hunter SA.) T is decision is currently in appeal. T e same position has been adopted by the patent and trademark offi ce in several cases, denying the notoriety of several trademarks on the basis of a national notoriety exam.
the statute of limitations will not start running unless the infringement has ceased. In other words, the statute of limitations will run from the date the improper acts cease. However this view is not shared by all courts and in several cases national authorities have applied the statute of limitations of fi ve years despite a continued use and the absence of having proved bad faith.
Lack of unity in the declaration of notoriety
According to Article 6 bis of the Paris Convention, “the countries of the Paris Union undertake, ex offi cio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefi ts of this Convention and used for identical or similar goods …”
T e latter provision resulted from the discussion in the 1920s among the member countries of the need to protect well-known marks. However this provision is considered to be insuffi cient and it is leſt to each signatory country to decide how it wishes to address the protection of well- known trademarks. Most countries do not have a separate procedure for the recognition of well- known trademarks.
Additionally, Article 16 of TRIPS, which is in force in Costa Rica, states that “in determining
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whether a trademark is well-known, members shall take account of
the knowledge of the
trademark in the relevant sector of the public, including knowledge in the member country concerned …”.
According to the Costa Rican Constitutional Chamber the aforementioned means that it suffi ces for the trademark to be considered notorious in some (which can possibly be just one country) of the members of the Paris Union. Additionally, the notoriety can be obtained by the knowledge of the trademark in the market due to advertising, and not necessarily because of the use of the specifi c product or service. In conclusion, the mark is considered notorious if it is notorious in the member country of registration or use and is not circumscribed to the ‘national territory’. (Decision 2001-0933 of
the Constitutional Chamber, legal action
promoted by Trademares CR, SA to abolish a legal right.)
Similarly, the Administrative Appeals Tribunal has stated that to declare the notoriety of a trademark is not necessary for such trademark to be in use in Costa Rica. Neither the Costa Rican Trademark and Other Distinctive Designs Law nor the Paris Convention require for the declaration of notoriety that the trademark is registered. (Decision number 339-2011 of
the Administrative Appeals
Tribunal, opposition to the registration of the trademark ‘Amita’.)
Notwithstanding the criteria of the
Constitutional Chamber and the Administrative Appeal Tribunal analysed above, the civil courts
In conclusion, in reference to the declaration of notoriety by the national authorities there is lack of unity as to the territory where the notoriety has to be proved. T is diff erence produces a lack of security and additional costs to trademark owners. T ose who want a trademark to be declared notorious have to submit several kinds of evidence from diff erent jurisdictions in order to have a chance of overcoming an unclear notoriety exam. Furthermore, they can expect to expend more in fees and time, because they can make their petition of notoriety only before the Administrative Appeals Tribunal by means of appeal, aſt er passing through all the process before the trademark offi ce, which will probably reject their petition.
María del Pilar López is a senior attorney and director of the IP department at Zürcher Lawyers. She can be contacted at:
plopez@zurcherip.com
María del Pilar López handles all aspects of IP practice, assisting companies with strategic portfolio development and management, including the registration of
rights, administrative appeals and
oppositions, enforcement actions and judicial litigation.
World Intellectual Property Review Annual 2013 49
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