#CostaRica 🇨🇷 #APriori_Article: When Trademarks Are Not Distinctive: Legal and Commercial Risks

This change makes it even more important to understand the role of intellectual property and the protection it affords, particularly to those signs intended to distinguish and position a business in the market.

Costa Rica has clear and comprehensive legislation on this subject and is also a party to several international treaties that harmonize the regulation of intellectual property.

The terms trademark and distinctive sign are often used interchangeably. This is because the law protects those signs that identify or distinguish a product or service from others. The term “distinctive sign” is broader in scope, as it includes not only trademarks, but also trade names, geographical indications, and related elements.

That said, we must not lose sight of the key point: regardless of the term used—name or sign—all these elements serve the same purpose: to distinguish the brands, products, and businesses that abound in the marketplace.

This is where one of the main limitations of our legal framework becomes relevant: non-distinctive signs may not be registered. This includes commonly used words, generic terms, descriptions of the product or service, deceptive signs, or signs lacking originality. Put simply, our legislation would not allow the registration of words such as “Monday,” “Tuesday,” “coffee,” “bakery,” “store,” “small,” or “Café Costa Rica” as trademarks, since they are considered generic or merely descriptive of the product, the service, or its geographical origin.

We can therefore state that what is generic cannot enjoy trademark protection, as no one can claim exclusive rights over a common or ordinary word. However, the use of descriptive elements may eventually become eligible for protection if they acquire what is known as secondary meaning. This occurs when a mark becomes distinctive not because of its literal meaning, but because of the unique association it creates with a specific product or service in the consumer’s mind (Apple, for example). Achieving this requires time, consistency, and a significant investment.

For this reason, trademarks that fail to create a clear distinction—whether because they sound, look, or resemble others too closely—may face difficulties not only during the registration process but also in terms of legal enforceability. Even if a trademark composed of common words is successfully registered, its legal defense may be limited due to the lack of distinctive elements.

For instance, suppose we wish to register the name “Mujer Moderna” for our boutique. While the Registry may allow it, nothing would prevent a neighboring boutique from calling itself “Mujer Actual.” This is because, although the phrase may have some degree of distinctiveness as a whole, protection does not extend to the individual words—which are of common use—but only to the specific phrase. In practice, legally defending such a trademark could prove difficult.

The best recommendation is always to seek expert legal advice, conduct a prior search within the desired category or class, and aim to register a distinctive sign that does not directly describe the goods or services offered. Choosing a creative, original, and distinctive name not only facilitates registration but also strengthens brand identity and reinforces legal protection.