Trademark Cancellation for Non-Use in Costa Rica: Guide

Trademark Cancellation for Non-Use in Costa Rica: How a Registration Can Be Taken Away

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When five years of silence puts your trademark at risk

Trademark cancellation for non-use in Costa Rica is one of the most underestimated risks in brand management. Under Article 39 of Law 7978, any interested party can request the cancellation of a registered trademark that has not been used in Costa Rica for five consecutive years. The mark does not expire automatically — but a competitor who wants the name can force its removal. This guide explains who can request cancellation, what counts as use, how to defend against it, and what happens if you lose.

The five-year rule: how trademark cancellation for non-use works in Costa Rica

Article 39 of Law 7978 is direct: at the request of any interested party, and after giving the trademark owner a hearing, the Registry of Industrial Property will cancel a registration that has not been used in Costa Rica during the five years preceding the cancellation request.

Two timing rules define the boundaries. First, the cancellation action cannot be filed before five years from the date the mark was registered — a newly registered mark gets a five-year grace period regardless of whether it is being used. Second, the five-year count runs backward from the date the cancellation request is filed, not from the registration date. In other words, what matters is whether the mark was in use during the five years immediately before the challenge.

What counts as “use” under Costa Rican law

Article 40 defines use with specificity that matters. A registered trademark is considered “in use” when the products or services it distinguishes have been put into commerce with that mark, in the quantity and manner that normally corresponds, considering the size of the market, the nature of the goods, and the way they are typically commercialized.

This definition has practical consequences:

• Token sales do not count. A handful of transactions designed to create the appearance of use — without real commercial activity — will not satisfy the requirement.
• The standard is proportional. A niche product in a small market is not held to the same volume standard as a mass-market brand. What is “normal” depends on the specific industry.
• The use must be in Costa Rica. Use in other countries, even neighboring ones, does not count. The mark must be in commerce within Costa Rican territory.
• Use by a licensee counts. If someone else is using the mark under a valid license, that use is attributed to the owner.

Who can request cancellation — and why they do

Any “interested party” can file the request. In practice, the most common scenarios are:

• A company that wants the name. The most frequent case: a business wants to register a mark that is already taken, discovers the existing registration is not being used, and files for cancellation to clear the path.
• A competitor facing an infringement claim. If the trademark owner sues for infringement, the defendant can counter by requesting cancellation for non-use — turning the offense into defense.
• A party opposing a registration. During the opposition window, the applicant can challenge the opposing mark’s validity by arguing it has not been used.

Cancellation as a legal weapon: opposition, nullity, and infringement

Article 39 explicitly allows cancellation for non-use to be raised not only as a standalone action, but also as a defense in three other proceedings:

1. Against a Registry objection. If the Registry objects to your application because of an existing mark, you can request cancellation of that mark for non-use.
2. Against a third-party opposition. If someone opposes your registration based on a mark they own but do not use, cancellation for non-use removes their standing.
3. As a defense in an infringement action. If you are sued for trademark infringement, you can counter that the plaintiff’s mark should be cancelled for non-use — eliminating the basis of the claim.

In all three cases, the cancellation is resolved by the Registry of Industrial Property. This makes non-use cancellation one of the most versatile tools in Costa Rican trademark practice — and one that every brand owner should understand, whether they plan to use it or defend against it.

How to defend against a cancellation action

If your mark is challenged, the law gives the owner a hearing before the Registry decides. The strongest defense is straightforward: prove use. Evidence of real commercial activity — invoices, advertising, product packaging, import records, distribution agreements, web sales — showing that the mark was in commerce during the relevant five-year period.

Article 39 also provides a specific escape valve: if use of the mark began after the five-year period but at least three months before the cancellation request was filed, that late use blocks the cancellation. However, this is a narrow window — it requires that the use started genuinely, not in anticipation of a specific challenge.

If non-use affects only some of the goods or services in the registration, the cancellation does not eliminate the entire mark. Instead, the Registry reduces the list, removing only the classes or items for which the mark was not used. This is partial cancellation — a proportional remedy that preserves what is actually in commerce.

What happens if the mark is cancelled

Once the Registry cancels a registration for non-use, the consequences mirror those of a lapsed renewal — but with an additional sting:

• The name is released. The party that requested cancellation — or anyone else — can now apply to register the mark.
• You lose enforcement rights. No more opposition filings, seizure requests, or infringement claims based on that registration.
• The cancellation is public. Unlike a quietly lapsed renewal, a cancellation for non-use is a matter of record — and it signals to the market that the brand was not active.

Frequently asked questions

After how many years can a trademark be cancelled for non-use in Costa Rica?

Five years. If the mark has not been used in Costa Rica during the five years preceding the cancellation request, it can be cancelled (Article 39, Law 7978).

Who can request trademark cancellation for non-use?

Any interested party — typically a company that wants the name, a defendant in an infringement case, or an applicant facing an opposition based on the unused mark.

What counts as “use” of a trademark in Costa Rica?

The products or services must have been put into commerce with the mark, in a quantity and manner that is normal for the market and the type of goods (Article 40). Token use does not qualify.

Can I start using the mark late and still avoid cancellation?

Only if use began at least three months before the cancellation request was filed. Use that starts after the request is filed does not block it.

Can only part of a registration be cancelled?

Yes. If non-use affects only some goods or services, the Registry reduces the list rather than cancelling the entire mark. This is partial cancellation.

Can cancellation be used as a defense in an infringement lawsuit?

Yes. Article 39 explicitly allows it. If the plaintiff’s mark has not been used for five years, the defendant can request its cancellation, eliminating the basis of the claim.

Related guides

• Trademark Renewal in Costa Rica: Deadlines and Process
• Trademark Registration in Costa Rica: The Local Filing Rule
• Trademark Enforcement: Anti-Counterfeiting Guide

This article is general information, not legal advice. Source: Law No. 7978, Articles 39, 40, 442. Consult qualified counsel before making decisions.