10-16-2012 (Newsletter Issue 15/12)
Major Amendments to IP Laws
There have been major changes in the Intellectual Property Laws in Panama due to the implementation of the Free Trade Agreement with the U.S.
Panama has approved the following treaties:
- Trademark Law Treaty (TLT)
- Patent Cooperation Treaty (PCT)
- Budapest Treaty
- UPOV Treaty
Law No. 35 of 1996 has been amended to comply with these treaties and major changes are:
- Multiclass registration system for trademarks is now possible.
- Online registration will be available.
- Elimination of the requirement of authentication and legalization of Powers of Attorney.
- Elimination of the requirement to provide a certificate evidencing the existence of the applicant company.
- New requirement to declare a domicile in Panama for administrative and judicial purposes.
- The concept of registration of Powers of Attorney.
- Official trademark fees have been amended.
- Protection is granted to commercial names without registration being required.
- Mergers, assignments, change of name and address can be done for all the trademarks owned by one company at the same time with just one document.
- The best right system will change from first international use to local use.
- Opposition, nullity and cancellation actions can now be appealed up to the Supreme Court.
- Special rules and regulations on geographic indications.
The new legislation went into effect on October 1, 2012.
Source: Jimenez, Molino y Moreno, Panama and
Alfaro, Ferrer & Ramirez, Panama
Legal basis is the Intellectual Property Law, in force since November 10th, 1996, and the Executive Decree no. 7 of February 17th, 1998. Law No. 35 of May 10, 1996 has been amended in 2012 by Law 61 of October 5, 2012.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
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.
The application is filed at the Panama Industrial Property Direction (DIGERPI).
Multiple-class applications now are possible.
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 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. 12 to 18 months. Prior to registration, the trademark application is published in the “Boletin de la Propiedad Industrial”.
The opposition period is 2 months from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
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.
If the trademark has not been used in Panama within 5 years from registration or has not been used later for a continuous period of 5 years, it may be subject to cancellation.
The official fee for filing a trademark is approx. USD 120.00 per class including registration and publication fees.
Trademark Licence Agreement
In Panama licence agreements must be in writing. It is not permitted to license the use of unregistered marks. A licence may be restricted to only some of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the recordal of a licensee with the Trademark Office. The recordal is mandatory for purposes of enforcing the licence rights against third parties. There is no time frame for a recordal and there is no prescribed form or content for a licence agreement. However, the licensing contract should include the name of both parties, the name of the mark, the goods covered under the licence and the term of the licence.
No further documents are required.
The licence becomes enforceable as from the date of recordal with the Trademark Office. The licence is not required to be published.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings but he may not call upon the trademark owner to institute infringement proceedings. The licence could grant rights to the licensee in order to act on behalf of the titleholder, but this is not mandatory and the licensing contract could regulate this issue.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
The Prices above are S.M.D. Markeur Search Fees
We would like to thank the following law firms for their assistance in updating the information provided:
Alfaro, Ferrer & Ramírez , Panama, Panama
Arosemena Noriega & Contreras, Panama, Panama
De Puy & Asociados, Panamá, Panama
Fabrega, Acosta, Vega & Asociados, Panama, Panama
Jimenez, Molino Y Moreno, Panama City, Panama
Moeller IP Advisors, Buenos Aires, Argentina
Jimenez, Molino Y Moreno, Panama City, Panama