In San Ramón de Alajuela, a small family-run supermarket became the center of a legal dispute that garnered international attention. This is the story of ‘Super Mario,’ a business that has been operating for over 40 years and recently faced off against the Japanese multinational Nintendo Inc. in a battle over its commercial name.

The history of this supermarket dates back to the 1970s when Mario Alfaro founded the business under his own name. However, ‘Super Mario’ is also an iconic name in the world of video games, as the character created by Nintendo debuted in 1983 and has become one of the most recognized franchises worldwide. With its trademark rights protected in various categories, the Japanese company decided to take legal action against the Costa Rican establishment, seeking to prevent the use of the name.

The Key to the Mini-Supermarket’s Victory

The legal conflict revolved around trademark registration in Costa Rica. Local legislation protects trademarks for a period of 10 years, after which they must be renewed to maintain their validity. The Super Mario supermarket registered its trademark in category 35 of the International Nice Classification, which includes retail services and the supply of basic consumer goods.

The key legal argument was that Nintendo did not have its trademark registered in that specific category within the country. The Japanese company protects ‘Super Mario’ in classes such as 9, 18, 25, and 28, which include video games, clothing, and toys, but not in the supermarket sector. This factor led the National Registry to reject Nintendo’s opposition, allowing the mini-supermarket to continue operating under its name.

How to Register a Trademark in Costa Rica

The process of registering a trademark in Costa Rica is crucial for any business seeking to protect its commercial identity. Below are the main steps:

1. Preliminary Search: Before starting the registration process, it is advisable to consult the National Registry to verify that no identical or similar trademark could cause legal conflicts.
2. Classification of the Trademark: It must be determined in which class or classes of the Nice Classification the trademark will be registered. There are 45 classes; the first 34 correspond to products, while the remaining 11 correspond to services.
3. Filing the Registration Application: The applicant must apply to the National Registry, specifying the owner’s details, a description of the trademark, and the class in which it will be registered.
4. Publication in La Gaceta: Once the application is accepted, three edicts must be published in the official newspaper La Gaceta, allowing third parties to file objections within two months.
5. Evaluation and Resolution: If there are no objections or if they are resolved in favor of the applicant, the National Registry grants the trademark registration for an initial period of 10 years, renewable indefinitely.

Associated Costs

The registration cost depends on the number of classes in which the trademark is registered. In Costa Rica, each class costs $50, whereas in countries like the United States, the fee per class is around $250, and in the European Union, it can exceed €850. These differences highlight the importance of considering the necessary investment depending on the market in which the trademark is to be registered. Each class has a $50 fee and other administrative costs and fiscal stamps, which add up to approximately ₡181,500 in notary fees if a professional is hired for the process.

Nintendo Does Not Give Up

After losing the dispute against the Costa Rican supermarket, Nintendo took steps to prevent similar situations in the future. Currently, the company is in the process of registering its trademark in category 35 within Costa Rica. However, this does not affect the ‘Super Mario’ mini-supermarket, as its current registration allows it to continue operating and renew its trademark at the end of the protection period.

This case sets an important precedent in Costa Rican intellectual property law and reaffirms the importance of properly registering a trademark to avoid legal conflicts. Furthermore, it could influence future similar legal disputes, as it establishes a clear criterion on the coexistence of trademarks in different categories and the need to protect commercial rights in specific sectors. Additionally, it demonstrates that even against multinational giants, small businesses can successfully defend their rights if they comply with local regulations.

Fuente: El financiero

Jorge Enrique Gutiérrez Guillén

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