眾律國際法律事務所

Introduction:

Language: Spanish

Capital: Panama City

Area: 74,177.3 km2

Population: 4,058,374 (2016)

Currency: United state dollar (USD), Balboa (PAB)

Religion: Roman Catholics (70%), Protestant (15%)

Geographical situation: It is bordered by Costa Rica to the west, Colombia (in South America) to the southeast, the Caribbean Sea to the north and the Pacific Ocean to the south.

International treaty membership:

Trademark Law Treaty (September 7, 2012)

WIPO Copyright Treaty (March 6, 2002)

Paris Convention for the Protection of Industrial Property (October 19, 1996)

Convention Establishing the World Intellectual Property Organization (September 17, 1983)

Legislation:        

Law No. 35 of May 10, 1996, on Industrial Property and its amendment Law No. 61 of October 5, 2012.

Government Institutions:

Panama Industrial Property Direction (DIGERPI).

Type of trademark:

Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs as well as sound, smell and taste marks. The law also explicitly mentions trademark protection of slogans. Only the complete slogan is registrable, not the single words of which it consists.

The following trademark types are registrable: trade marks, service marks, collective marks, certification marks and trade names.

Ground for refusal :

1. reproductions or imitations of coats of arms, flags and other emblems, acronyms, names or abbreviated names of any State or national or international organization, without due authorization;

2. marks that together constitute descriptive indications of the nature, characteristics, use or application, type, quality, quantity, purpose, value, place of manufacture or origin or time of production of the product or rendering of the service concerned, or expressions that constitute the usual or generic designation of the product or service, with the exception of descriptive or generic marks that have become distinctive or special through use;

3. figures or three-dimensional shapes capable of deceiving or misleading the public, understood as being those that convey a false impression as to the nature, components or properties of the goods and services that they are intended to cover; 4. the names of peoples or places known for the manufacture of certain goods, used to cover those goods, with the exception of the names of places in private ownership where they are special and not prone to confusion and provided that the owner’s consent has been obtained;

5. signs that are contrary to morality, public policy or proper practice;

6. names, pseudonyms, signatures and portraits of persons different from the one applying for registration, without the consent of those persons or, if they are deceased, that of their heirs; with the exception of portraits or names of historical figures;

7. the designs on coins, banknotes, hallmarks denoting control or warranty used by the State, seals, stamps or tax imprints in general;

8. marks that include or reproduce medals, awards, diplomas and other elements that give the impression that recognition has been received for the corresponding goods or services, except where such awards have been genuinely presented to the applicant for registration or to the person to whom the entitlement has been assigned, and where the fact is proved when registration is applied for;

9. marks that are identical, similar or comparable in orthographic, graphic, phonetic, visual or design terms to another mark that is used or known and has been registered or is undergoing registration on behalf of another person to distinguish goods or services that are the same or of the same type as those to be covered by any trademark or similar to them, provided that the similarity or identity of the one and the other are liable to cause errors, confusions, unintentional substitutions or misapprehensions in the mind of the public with respect to those goods or services or the source thereof. In the case of related goods or services, a person who considers himself affected may oppose registration on the basis of the provisions of this item;

10. marks that are identical or similar to a famous or renowned trademark and are intended for application to any product or service, or known or well-known signs for application to specific goods or services according to the group of consumers to which they are addressed;

11. proper or common geographical denominations, maps, and also nouns and adjectives, including gentilics, where they denote the source of the goods or services and are liable to cause confusion or mistakes regarding that source;

12. marks that consist basically of the Spanish translation of another mark that is already used, known, registered or undergoing registration to distinguish identical or similar goods or services;

13. marks that are total or partial reproductions, imitations, translations or transcriptions liable to deceive, confuse or mislead the public of a nationally or internationally known trade name belonging to a third party and in use prior to the date of the application for registration as a trademark;

14. three-dimensional shapes that lack such originality as will readily distinguish them, and also the usual and everyday shape of goods or that which is dictated by their nature or industrial functions;

15. animated or changing names, figures or three-dimensional shapes that are expressed by movement, even where they are visible;

16. the titles of literary, artistic or scientific works and fictional or symbolic characters, except with the author’s consent where, in accordance with the relevant law, the said author retains full possession of his rights, and also characteristic human figures where their conformity is not assured;

17. letters, numerals or colors in isolation, except where they are combined with or constituted or accompanied by elements such as signs, designs or denominations that give them distinctive character;

18. words, letters, characters or signs that are used by indigenous or religious communities or associations without gainful intent to distinguish the manner of processing goods or finished goods or services and also those that constitute expressions of their culture or customs, idiosyncrasies or religious practices, except where the application is formulated on their behalf by one of the communities or associations provided for in this item;

19. marks that use, as a basis for their design, references to national historical monuments and sites that are recognized as such by Law.

Application content:

All applicants need a local lawyer.

A Power of Attorney Registry has been established by Law 61 but a regulation is not yet available. After the Power of Attorney is registered, there will be no need to submit a Power of Attorney with each application or renewal anymore; the reference to the registration details will suffice.

The requirement of authentication and legalization of Powers of Attorney is not needed anymore.

The applicant’s company doesn’t need to provide a certificate evidencing its existence anymore. However, the registration details and jurisdiction under which the company is existing must be declared.

A domicile in Panama for administrative and judicial purposes is required.

The application shall contain:

1. the name, nationality, full address and personal identity card or document number of the applicant and attorney;

2. in the case of a legal entity, its business style, place of incorporation and full address;

3. the name or design of the trademark, or both, as used on the market;

4. a list of the goods or services in connection with which the trademark is or will be used.

The opposition period is 2 months from publication date of the application.

Application process:

The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.

The processing time from first filing to registration or first office action is approx. 3 to 6 months. Prior to registration, the trademark application is published in the “Boletin de la Propiedad Industrial”.

Refusal:

When it is found that the application does not meet one or more of the formal or substantive requirements, the person concerned shall be informed so that he may rectify the error or omission within a period of three months.

On expiration of the said period without the error or omission having been rectified, the application shall be considered abandoned, in which case the consignment of the file to the archives shall be ordered.

The incapacity for an applicant to prove the payment of the fees have been done, is also a cause of refusal.

Rights of exploitation and related delay:

Protection begins with the date of application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.

Renewal of the registration of a mark shall be requested within a period running from one year before to six months after the expiration date of the registration concerned.

The renewal request may not introduce changes to the mark or extend the list of goods or services for which it is registered; nevertheless, the owner may limit the said list. For the introduction of changes or the addition of goods or services, a new application shall be filed.

The right to the registration of a trademark shall be acquired through use. The right to its exclusive use shall be acquired by registration.

The owner of the registration of a trademark shall have the right to prohibit third parties from engaging in any of the following acts without his authorization:

1. manufacturing, printing or reproducing labels, headings, containers, wrappers and other similar means of identification, packaging or presentation that display the trademark or an identical distinctive sign when it is clear that the intention is to use those means in connection with the goods or services for which the trademark is registered, or related goods or services, and to sell them or offer them for sale;

2. applying, pasting or in any other way fixing the trademark or an identical distinctive sign or one that so resembles it as to mislead the public regarding the goods for which the trademark is registered to containers, wrappers, packaging or the presentation of such goods, to goods that have been made, transformed or processed by services for which the mark is registered, or to articles that are used for the making available of such services to the public;

3. using a distinctive sign identical or similar to the registered trademark to identify the same goods or services as those for which it is registered, or for goods related to them;

4. using a distinctive sign identical or similar to the registered trademark to identify goods or services different from those for which it is registered where the use of the said sign for such goods or services might cause confusion or a risk of association with the registered trademark;

5. using a distinctive sign identical or similar to the registered trademark in trade without just reason and in a manner liable to prejudice the owner thereof, especially where such use might dilute or destroy the distinctiveness or commercial value of the trademark;

6. using, in connection with a particular trademark, terms of comparison with another trademark used for goods or services that are similar or identical, diluting or destroying the distinctiveness or commercial value of the latter and thereby prejudicing the owner thereof.

On receiving notice of a decision, the applicant’s agent shall have a period of ten working days within which to lodge the request for reconsideration with DIGERPI and substantiate it. In the case of an appeal, the applicant’s agent shall have a period of ten working days within which to lodge the appeal with DIGERPI and substantiate it, whereas DIGERPI shall forward the file without further processing to the Minister of Commerce and Industries for a ruling.

Transfer and conditions:

The owner of a registered trademark may, by assignment contract or license allow one or more persons to use the trademark for all or some of the goods or services covered by the registration. The owner may reserve the right of simultaneous use of the trademark.

The rights deriving from an application or registered trademark may be assigned or transferred to one or more persons. The transfer of rights shall be registered with DIGERPI in order to be binding on third parties.

Certification:

The certificate of registration shall state the following:

1. name or business style, address and other particulars concerning the owner of the mark;

2. number and date of the decision ordering registration;

3. date and term of registration;

4. data concerning the entry in the register;

5. name or reproduction of the mark;

6. class number and particulars of the goods or services covered by the mark or limitation thereof, as the case may be;

7. date of issue of the certificate of registration.

Withdrawal and cancellation:

The property rights in a registered trademark shall end through cancellation of the registration concerned, which shall occur in any of the following situations:

1. express renunciation by the owner;

2. failure to use the trademark for more than five consecutive years;

3. expiration of the term of the registration without renewal having been requested at the appointed time and in the manner provided for in this Law;

4. an enforceable ruling by a competent authority declaring the registration invalid and ordering its cancellation.

The registration of a trademark shall be null and void in the following cases:

1. where the marks that has been granted protection is subject to ground for refusal; 2. where it has been granted on the basis of essential particulars that are false or inaccurate in the application, or in the accompanying documents, in which case registration shall be deemed to have been obtained in bad faith;

3. where the holder of the power of attorney, the legal representative, the user or the distributor of the owner of a trademark registered abroad applies for and obtains registration of the said trademark or of another confusingly similar trademark in his own name or in that of a third party without the express consent of the owner of the foreign trademark, in which case registration shall be deemed to have been obtained in bad faith.

Customs protection:

In Panama custom authorities and administrative authorities from the Colon Free Zone, which have their own special brand register, are empowered by law to retain, inspect and even seize counterfeit goods; in some cases, these institutions may proceed even without the need of a claim or process in case of suspicion of counterfeited goods.

The Customs Bureau and the Free Zone Administration are duly empowered to keep records of the Panamanian Intellectual Property Registrations for companies willing to protect their intellectual property through barrier measures.

One or more of the following measures may be applied for and ordered in an action for infringement of rights protected under this Law:

1. cessation of the acts infringing the rights;

2. indemnification for damages sustained;

3. the measures necessary to prevent the continuation or repetition of the infringement;

4. publication of the condemnatory sentence in the Official Gazette.

In any case of improper use of industrial property rights, it shall be appropriate to effect the seizure of the articles and machinery used in the said improper use, whereupon they shall be donated to charity, free of any encumbrance, by the institution concerned, after removal of elimination of any distinguishing symbols. Where it is not possible to remove distinguishing symbols, and where the owner of the protected rights does not give his express authorization for the donation, the articles shall be destroyed by the competent authority in the presence of a representative of the owner of the protected rights.

Sources:

Wipo.int:

Law No. 35 of May 10, 1996, on Industrial Property and its amendment Law No. 61 of October 5, 2012.

Vincent Lagier