Trade and Service Marks

– Law No. 64 of December 28, 1934.
– Law No. 41 of July 13, 1995.
– Law No. 29 of February 1, 1996.
– Law No. 35 of May 10, 1996.
– Executive Decree No. 7 of February 17, 1998.
– Law No. 1 of January 5, 2004.
– Law No. 61 of October 5, 2012.

Membership in International Conventions

– Pan-American Convention of Washington (1929).
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 17, 1983.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 4, 1991.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since October 19, 1996.
– WTO’s TRIPS Agreement, since September 6, 1997.
– Trademark Law Treaty, since September 7, 2012.

Filing

Applicant: the owner, his assignees or successors, through a lawyer or law firm qualified in Panama.

Protection for foreigners: same protection as for nationals.

Kinds of protection: product and service marks; collective and warranty marks; slogans; commercial (trade) name (title).

Not registrable: (1) trademarks which, in the spelling, graphic, visual or conceptual form, are identical or similar to another mark, used, known, registered or under registration proceedings by another person, in order to distinguish the products or identical services, of the same class or similar to those sought to be protected with the new mark, provided that such similarity or identity between one and the other may give rise to errors, confusions, mistakes or deception in the mind of the public in respect of such products or services or their origin; (2) marks which are identical or similar to a famous mark to be applied to any product or service; or the identical or similar notorious or well-known mark, to be applied to products or services specified according to the consumer group to which they are intended; (3) marks basically consisting of the Spanish translation of another already used, known, registered or under registration proceedings, to distinguish identical or similar products or services; (4) marks which constitute total or partial reproduction, imitation, translation or transcription of a commercial name belonging to a third party, known locally or internationally, and which had been used prior to the date of the application for registration of the mark which may lead the public to error, confusion or deception; (5) marks consisting of the titles of literary, artistic or scientific works, and names of fictitious or symbolic characters without the consent of the author; (6) letters, numbers or isolated colors, unless they are combined, constituted or accompanied by such elements as signs, designs or denominations, which attach a distinctive feature to them; (7) marks consisting, as a whole, in descriptive references to the nature, characteristics, use or application, kind, quality, amount, use, value, of the place of manufacture, of origin, or the date of production of the product or the place or date of rendering the service in question, as well as the expressions constituting the usual or generic denomination of the product or service, with the exception of those which have become distinctive or singular by their use; (8) reproductions or imitations of the coats of arms, flags and other emblems, initials, denominations or abbreviations thereof of any state or of any national or international organization, without due authorization.

Classification: International Classification. A different certificate will correspond to each particular class.

Territory covered: Republic of Panama.

Filing requirements for an application (to be sent to resident lawyer):
1. Name and address of the applicant. In case of a foreign company, the country where the company is recorded and its incorporation data; also company must declare an address in Panama (local attorney or law firm) to receive notifications when necessary;
2. Power of attorney in favor of a resident lawyer or law firm;
3. Sworn affidavit stating the first date of use of the trademark in the country of origin, in international commerce, and in the Republic of Panama, duly authenticated either by a Consulate of Panama, or by Apostille. If the application is based on an intention to use the mark, this fact must be indicated. The affidavit document may be prepared by the local attorney or law firm;
4. 8 labels of the mark;
5. If a priority is claimed, the application must attest the country or office where the priority was filed, the date of such filing and the number assigned to said application. A certified copy of the priority application must be filed within six months after the filing of the application in Panama.

Filing without power of attorney: possible by posting a surety bond in the amount of U.S.$ 103. The law provides a two-month period to submit the power of attorney. Said period can only be extended for one additional month.

Examination

Formal examination: upon receipt of the application, DIGERPI will make an examination as to the formal requirements established in the Law, and if the application is deficient, the applicant will have a period of three months to remedy any deficiency. If the applicant does not comply with what is required, the application will be deemed abandoned and the file will be closed. Furthermore, once DIGERPI completes the examination as to form, it will also make an examination of the distinctiveness of the mark as well as of any background thereof. If, as a result of this review, the application is found to incur any of the prohibitions as to substance, DIGERPI shall pass a resolution rejecting the application and explaining the reasons, and ordering that the file be closed. Against the aforesaid resolution, a Recourse of Reconsideration or an Appeal may be filed, and the applicant will have a period of ten working days for filing and supporting either one of these Recourses.

Letters of consent: accepted.

Publication: when no deficiencies bar the granting of the trademark or when such deficiencies have been duly corrected, DIGERPI will order the publication of the trademark in the BORPI (Industrial Property Bulletin).

Opposition: once the trademark application is published, any person may file an opposition suit before the proper authority, within two months from the day following the publication. The jurisdiction to deal with the suit rests in the commercial courts. If no opposition suit is filed, DIGERPI will issue the corresponding certificate of registration.

Amendment of application: possible at any time before the date of issue of the Panamanian certificate of registration of a trademark. However, the application should be published again in the Amendment Section of the BORPI.

Registration

Grant: the trademark’s certificate of registration will be granted preserving the rights of third parties.

Kind of property: registration entitles its proprietor to the exclusive rights to use it in commerce. The Law also allows the proprietor the right to bring court actions against third parties who use an identical or similar mark or sign without his consent.

Duration: ten years from the date of filing.

Renewal: trademarks can be renewed indefinitely.

Application for renewal: the renewal must be applied for within the period between one year immediately preceding, and six months following the expiry date of the registration.

Use: the use of a mark should be understood as “the placing of products, articles or merchandise under the trademark, whether they are produced, manufactured, processed, or prepared in the Republic of Panama or in foreign countries”. The use of a service mark should be understood as “the rendering of services contemplated by said mark in the national or international commerce”. Furthermore, it will not be necessary to submit any specific document or real merchandise as proof of use of a mark.

Marking of registered goods: not compulsory but advisable.

Text of marking: “M.R.” (Marca Registrada) or “R”.

Modification of the mark: not provided for. However, the trademark may be used in a slightly different manner from the one already registered.

Assignment: a trademark registration or application may be totally or partially assigned or transferred under the terms and conditions established by the common legislation. The assignment or transfer of rights must be recorded at DIGERPI in order to be effective against third parties.

License agreement: must be duly recorded at DIGERPI, by filing a certified copy of the license agreement, duly authenticated either by a Consulate of Panama, or by Apostille. Said document may be granted simultaneously to one or more persons, and it may cover all of the goods or services of a registered mark or part thereof. Furthermore, unless otherwise expressed in the agreement, the licensee of the mark may take action against infringers. It should be noted that a license agreement cannot be recorded while registration of the mark is still pending. The cancellation of the recordation of a license may be obtained, in any of the following cases: (a) when jointly so requested, by the owner of the trademark registration, and the person to whom the license has been granted; (b) when one of the parties requests it, in accordance with the terms of the license agreement; (c) due to the nullification or lapsing of the trademark registration; and (d) by court order.

Modification of Protection after Registration

Cancellation and nullification of a registration: the property right on a registered mark expires with the cancellation of the corresponding registration, which may be done in any of the following cases: (1) express renunciation of the owner; (2) lack of use for more than five consecutive years; (3) expiration of the term of registration, without having applied in time for its renewal; and (4) final judgment from a competent authority declaring the nullification and ordering the cancellation of the registration.

Opposition to a granted mark: an interested third party may request the nullification and cancellation of the registration of a mark, in accordance with the procedure established for the opposition suits. The action to demand the nullification is under a statute of limitation of ten years, counted from the date of registration, unless it had been applied for in bad faith, in which case the action may be exercised at any time during its existence. The grounds for nullification of a registration of a mark are: (1) if the trademark registration has been granted in violation of the prohibitions attested in the text of this article; (2) if it is granted on the basis of essentially false or inexact data set forth in its application or in the documents accompanied thereto; and (3) if it is granted to the lawyer, the legal representative, the user or the distributor of the title holder of a foreign registered mark, without the express consent from its registered owner.

 Infringement: Panamanian law provides that whoever counterfeits, adulterates or imitates a given product protected by a registered mark or commercial name is penalized. Proceedings must be initiated at the competent authority. Precautionary measure or injunction with a bond to guarantee the discontinuance of the infringing products and acts, and on their advertising or on the prime materials used for the manufacture of the goods are also provided by the Panamanian law.

Penalties: in the term of criminal actions the Panamanian law establishes penalties of two to four years imprisonment, but if any of the described acts thereby endanger public health, shall be punished with imprisonment for thirty months to six years. Money laundering funds originating from industrial crimes shall be penalized with five to twelve years imprisonment or 100 to 200 days fine. In the term of civil actions: (1) a fine from U.S.$ 10,000 to U.S.$ 200,000 at the discretion of the Judge; (2) a suspension of the right to engage in commerce or in the exploitation or industries for a period of three months; and (3) if the company is located at the Colon Free Trade Zone, free zone or processing zone in Panama for exportation, will also be punished with a suspension for a minimum period of three months or cancellation of the operation code or permit, and 25% of the monthly income of the company. In case of repeat offense, the penalties set forth under points 2 and 3 hereof, shall be applied for a period of one year, and the penalty set forth under point 1 may be four times the maximum fine therein established.

Particularities for Collective and Warranty Marks

The provisions relating to marks set forth above, will apply to collective and warranty marks with the exceptions of the following:

Exceptions to protection of warranty marks: a national or foreign corporation or institution, private or public or state entity, regional or international, may be entitled to a warranty mark. The warranty mark may not be used regarding products or services, provided or traded by the holder of the mark, nor a person economically linked to him. The publication of the application will not take place in the Industrial Property Bulletin (BORPI), until a favorable report from a competent authority is received, concerning the nature of the products and services referred to in the warranty mark.

Special filing requirements for collective marks (to be sent to resident lawyer together with the application):
1. A copy of the regulation of use of the mark must be filed, which must detail the common characteristics of the products or services, and comply with the provisions aimed at ensuring and controlling that the mark is used pursuant to the regulation, and the penalties in case of non-compliance thereof.

Particularities for Commercial Names

The provisions relating to marks set forth above, will apply to commercial names with the exceptions of the following:

Exceptions to protection of commercial names: (1) those which are identical or similar to well-known commercial names, or famous or well-known marks; (2) those which consist of words or slogans with deceitful signs or susceptible to lead to confusion, or contrary to morality, public order or good customs; (3) those which do not correspond to the name of the establishment to which the commercial name or industrial license refers to, or to the user’s operation permit from a free zone. The associations are exempted; (4) those which contain names, corporate names, portraits or facsimiles of signatures, which are not those of the persons requesting the registration, unless the respective authorization from the owners or successors be filed therewith, evidencing expressly that they are authorized to use such names, portraits, corporate names or facsimiles of signatures; (5) those which are identical or similar to the ones which are in use by another person, or which are registered in favor of another person; (6) those which are identical or similar to a mark in use, pending registration or registered in favor of another person, provided that the use of the commercial name may lead to confusion in the market or involve the risk of an association with the prior mark; (7) those which are identical or similar to commercial names of famous and well-known marks, as well as the ones consisting of the Spanish translation thereof.

Special filing requirements (to be sent to resident lawyer together with the application):
1. A certified copy of the commercial or industrial license, or of the provisional license. In the case of foreign corporations, a certificate issued by the competent authority stating that the applicant is engaging in commerce or industry using the commercial name which it seeks to register.

Cancellation and nullification of a registration: the property right on a commercial name expires with the cancellation of the corresponding registration, which may be done in any of the following cases: (1) express renunciation of the owner; (2) cancellation of the commercial or industrial license; (3) expiration of the term of registration, without having applied in time for its renewal; (4) discontinuation of the businesses in the establishment; and (5) final judgment from a competent authority declaring the nullification and ordering the cancellation of the registration.