Statute of limitations for well-known marks

When it comes to well-known marks and unfair competition, the statute of limitations is a controversial issue. It would be simpler if it only implied the annulment of a trademark registration, but it usually comes associated with a continued use of the infringed mark.

According to Article 6 bis of the Paris Convention, of which Costa Rica is a member “… (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.” Further on it states that “… (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith …”

Similarly, Article 4, item 5(b) and (c) of Recommendation 833, states that “… a member state may not prescribe any time limit for requesting the invalidation of the registration of a mark which is in conflict with a well-known mark if the conflicting mark was registered in bad faith.

(b) Notwithstanding paragraph (4), a member state may not prescribe any time limit for requesting the prohibition of the use of a mark which is in conflict with a well-known mark if the conflicting mark was used in bad faith.

"In accordance with the paris convention, no time limit may be fixed for the cancelation or the prohibition of the use of marks registered or used in bad faith."

(c) In determining bad faith for the purposes of this paragraph, the competent authority shall take into consideration whether the person who obtained the registration of, or used, the mark which is in conflict with a well-known mark had, at the time when the mark was used or registered, or the application for its registration was filed, knowledge of, or reason to know of, the well-known mark …”

So in accordance with the Paris Convention, no time limit may be fixed for the cancellation or the prohibition of the use of marks registered or used in bad faith, which may result in imprescriptible rights contrary to the legal certainty that should exist.

The convention also provides for a period of five years to request the cancellation of a mark in the absence of bad faith, but what happens when continued use of the mark involves unfair competition? According to Decision No. 000855-F-2005 of the First Civil Court in November 2005, when there is continued improper use, the statute of limitations of the five-year term will not apply even if bad faith was not demonstrated.

Some jurists support this theory, affirming that 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 five years despite a continued use and the absence of having proved bad faith.