Volume 6, Number 19, Page 2

Intellectual Property Reform in Panama

Over the last few years, the Republic of Panama passed several important laws and regulations to protect and enforce intellectual property rights. The following article includes a review of the essential aspects of the new regulations.

Industrial Property Law No. 35 of 1996

Law No. 35 replaces the former provision on industrial property contained in the Administrative Code, which dates back to 1917 and that referred only to patents and trademarks. The new statute recognizes modern forms of industrial property rights such as utility models, industrial drawings or models, trade names, trade secrets, advertising statements or signs, collective and certification trademarks and licenses for trademarks and patents. Also, the new statute eliminates differences between domestic and foreign trademarks established in the former legislation of 1917.

In addition, the new law has introduced measures against the violation of Industrial Property rights; it confers discretionary powers and faculties to the Customs and Free Zone authorities to conduct investigations and retain merchandise which is suspected to be counterfeit, including the confiscation of equipment used to manufacture the counterfeited goods. The Attorney General’s Office and the Customs Bureau are officially empowered to start investigations on Industrial Property matters. It eliminates the former administrative proceedings regarding opposition and cancellation claims and assigns the venue and jurisdiction of such claims to the Judiciary branch through new and specialized courts created to handle only Intellectual Property claims.

Executive Decree No. 79 of 1997

In 1997, Executive Decree No. 79 of 1997 came into effect, whereby intellectual property (IP) matters in the Colon Free Zone and other Industrial Free Zones of Panama are regulated. This statute has introduced new measures to protect Intellectual Property rights in those areas, such as giving discretionary powers to the Free Zone authorities to conduct investigations and retain merchandise suspected to be counterfeit. Finally, this decree authorizes the holder of IP rights to provide a sample of goods and to file his registration rights (trademarks, patents and copyrights) in the Free Zone. Prior to the registration in the Free Zone, these rights must be registered at the Industrial Property Office and the Copyright Office.

It is expected that this new legislation will greatly facilitate the protection of IP rights and the prevention of their infringement in such an important trade center.

Copyright Law No. 15 of 1994

Law No. 15 replaced title V of the Administrative Code of 1917, which used to function as the Copyright Law. As the years passed, this title became too ambiguous as it only protected the artistic and literary industries. The new Act of 1994 recognizes, regulates and gives total protection to the new forms of copyrights, such as the Software Industry, Motion Picture Industry, Sound Recordings, as well as Music and Literary Publishing.

Trademarks

According to the Industrial Property Law No. 35 a trademark is understood to be any of the following: words or combination of words, including those that serve to identify persons; images, symbols and graphics; letters, figures and combinations thereof, when made up of distinctive elements; three dimensional forms, including wrappings, containers, shape of a product or presentation thereof and holograms; colors and combinations thereof and any other medium which, by its very nature, is capable of individualizing a product or service in the market.

Trademarks have to be filed individually, one class per application.

The right to register a trademark is obtained by its use. The exclusive right to use it is acquired by its registry.

The priority right to obtain the registration of a trademark is regulated by the following rules:

The person using the trademark in the market from the oldest date is entitled to a priority right for the registration.

If the trademark is not in use, the right shall be granted to the person that first files the corresponding application, or has the oldest priority date.

In order to oppose the use of a trademark by another person, it is required that such trademark be registered prior to the opposition. However, it is not necessary to have the trademark registered to oppose its registry by another person or to demand its cancellation as long as the opponent proves previous use thereof.

The person entitled to a famous or renowned trademark may oppose its unauthorized use and its registration, as well as demand the cancellation of the registration thereof should it had been granted.

If the trademark is not used for five (5) consecutive years in the domestic market after its registration in Panama, a cancellation action can be filed.

The requirements and information to be provided to file for a trademark registration in Panama are:

• Power of Attorney (legalized by Apostille or the Panamanian Consul). The application may be filed without the power of attorney by posting a $100.00 dollar bond to guarantee its presentation within two (2) months from the application date.
• If the applicant is a juridical person, a certificate of existence issued by the competent authority or the country of origin (legalized by Apostille or the Panamanian Consul).
• Affidavit (legalized by Apostille or the Panamanian Consul). Six (6) Labels: To claim priority right, an affidavit must be submitted with the Panamanian application. Also, the claimed right has to be proven within six months after the application has been filed in Panama. The priority application must state the country or office in which the priority application was submitted, and date and number thereof (a priority application must be legalized by Apostille or the Panamanian Consul).
• Name and/or design of the trademark as used in the market.
• Specification of the products or services on which said mark is or shall be used.
• A trademark is protected for a period of ten years since its filing date, and may be renewed for an equal period of time.

To renew, an extension request must be filed one year before or six months after expiration.

A trademark may be licensed to one or more people for all or part of the products or services protected by the registration.

The Industrial Property Law gives protection to franchising in regards to technical know-how and assistance. For such purpose both the license and the trademark must be registered in the Republic of Panama.

Trade Names

Industrial Property Law No. 35 defines trade name as a symbol used to identify and distinguish companies, partnerships, and businesses. The requirements to file for a trade name registration in Panama are the same as for trademarks, plus:

A copy of the commercial license or permit issued by the competent authority stating that the applicant is engaged in a commercial activity under the mentioned trade name (legalized by Apostille or the Panamanian Consul).

A description of its line of business or commercial activities.

Trade names are protected for a period of ten years since their filing date, and may be renewed for an equal period of time. To renew, an extension must be filed one year before or six months after expiration.

Advertising Statements or Signs

Law No. 35 defines advertising statements or signs as all advertisements, captions, slogans, phrases, combinations of words, designs, recordings or any other similar media, provided that they are original, characteristic and employed to attract the attention of consumers or users, in relation to a given product, merchandise, service, company or establishment.

The requirements to file for advertising statements or signs registrations are the same as for trademarks.

Advertising statements or signs are protected for a period of ten years since their filing date, and may be renewed for the same period of time. To renew, an extension must be filed one year before or six months after expiration.

Patents and Utility Models

The patent of invention is defined in Law No. 35, as any idea applicable in the practice to the solution of a particular technical problem. An invention may be a product and/or procedure or the special or the non-evident use of a product. Invention of a product comprises, among other things, any substance, composition or material, and any article, apparatus, machine, equipment, mechanism, device or other object or tangible result, as well as any of their parts. An invention of procedure comprises, among other things, any method, system or sequence of stages conducive to the manufacture or acquisition of a product or result, as well as the use or the application of a procedure or product for the purpose of obtaining a particular result.

Patents in Panama are valid for twenty years.

According to the Industrial Property Law, utility models are defined as any form, configuration or disposition of elements of any artifact, tool, instrument, mechanism or other object, or any parts thereof, which permit an improved or different functioning, utilization or fabrication of the object into which it is incorporated, or which provides some measure of usefulness, advantage or technical effect, that it did not previously have.

Those capable of industrial application may be filed as Utility Models. However, only minor differences, such as patents that contribute no discernible utilitarian characteristic with respect to previous inventions or utility models, may not be filed.

Utility Models are protected for a ten-year period, which is not renewable, from the date filed.

The requirements and information to be provided for the registration of Patents and Utility Models in Panama are:

• Power of Attorney (legalized by Apostille or the Panamanian Consulate). The application may be filed without the power of attorney with the posting a $100.00 bond to guarantee its presentation within two (2) months from the application date.
• A complete and clear explanation of the invention which must provide a comprehensive idea of it.
• A summary of the invention.
• A design of the invention.
• A document which, at first sight, shall contain one or more claims of the invention.

To claim priority right, this must be submitted with the Panamanian application. Also, the claimed right has to be proven within twelve months after the application has been filed in Panama. The priority application must state the country or office in which the priority application was submitted, and date and number thereof (a priority application must be legalized by Apostille or the Panamanian Consul).

In case the applicant is a Corporation, certificate of existence issued by the competent authority (legalized by Apostille or the Panamanian Consul).

Industrial Models or Drawings

The Industrial Property Law defines an industrial model or drawing as any bi-dimensional or tri-dimensional form which, incorporated into a utilitarian product, gives it a special appearance and renders it apt to serve as a type or model for manufacture.

Insofar as industrial property is concerned, protection to an industrial model or drawing does not comprise elements or characteristics of the model or drawing that serve only to obtain a technical effect, or that are suggested only for considerations of a technical nature.

The requirements and information to be provided in order to register an Industrial Model or Drawing in Panama are:

• Power of Attorney (legalized by Apostille or the Panamanian Consul). The application may be filed without the power of attorney by posting a $ 100.00 dollar bond to guarantee its presentation within two (2) months from the application date.
• Kind or type of products to which they will be applied.
• Class or classes to which the products belong.
• A graphic representation of the Industrial Model or Drawing.

To claim priority right, this must be submitted with the Panamanian application. Also, the claimed right has to be proven within six months after the application has been filed in Panama. The priority application must state the country or office in which the priority application was submitted, and date and number thereof (a priority application must be legalized by Apostille or the Panamanian Consul).

In case the applicant is a juridical person, certificate of existence issued by the competent authority (legalized by Apostille or the Panamanian Consul).

Industrial Models or Drawings are protected for ten years since their filing date and registration may be renewed for a period of five additional years. To renew, an extension request must be filed six months prior to expiration thereof.

Procedures after filing an application to register Trademarks, Trade Name, Advertising Statements or Signs, Patents, Utility Models, Industrial Models or Drawings

Once the application has been filed, it will be identified by a number and the date of presentation. During the process, the application will be verified by an examiner of the Industrial Property Office to establish if the application complies with the requirements of the Industrial Property Law. If so, it will be published in the Industrial Property Bulletin.

If the examiner rejects it because of non-compliance with the law, it may be amended and then continue the normal process. If not amended, the application shall be rejected altogether. The applicant can appeal the rejection through an administrative procedure before the Industrial Property Office.

Opposition Procedure

Applications of patents, utility models, industrial models or drawings, trademarks, trade names and advertising statements or signs, may be opposed by way of an action in court within two months after publication of the application in the Industrial Property Bulletin.

Cancellation Procedure

Any person who considers himself entitled to request the cancellation or nullity of a registered trademark, trade name, advertising statement or sign, may use the established opposition procedure.

A cancellation may also occur by:

• Express disclaimer by the holder of the right.
• Lack of use of the trademark, trade name and advertising statement or sign.
• The term of validity has expired without a renewal.
• A judicial sentence given by the intellectual property court.

The term to file a nullity action for a registered trademark, trade name and advertising statement or sign is ten years from the registration date. If the registration was requested in bad faith, it may be filed at any time during its validity.

The registration of a trademark is null when:

• It goes against the dispositions of the industrial property law.
• It is given based on false or inexact data provided in its request or the documents that accompany this request. In this case, the registration will be considered as given in bad faith.

The attorney, the legal representative, the user or the distributor of a trademark registered abroad requests and obtains in its name or the name of a third party its registry or another similar trademark that causes confusion without the consent of the owner of the foreign trademark. In this case, the registration will be considered as given in bad faith.

When some of the products and services of a particular trademark are nullified, this does not nullify the entire trademark, When the decision to nullify a trademark, either partially or totally has been ruled upon, the registry will be considered annulled within the limits specified in such ruling from the date of its requested.

This retroactive effect will not affect:

The resolutions concerning the violation of the trademark that had been ruled on before the declaration of nullity.

The contracts completed before the declaration of nullity, if these had been done in good faith and before the declaration. However, if the circumstances justify it, it is possible to claim restitution of the sums paid due to the contract.

Nullity Procedure

Any person who considers himself entitled to request the nullity of a registered patent, utility model and industrial model or drawing, may use the established opposition procedure.

A patent of invention or a registration of a utility model will be annulled in the following cases:

• When it is demonstrated that the concession or the registry was made against the dispositions of the industrial property law.
• When due to a modification or division of the application, the patent issued has claims that are not sustained in the matter contained in the original application.
• When it is given to someone that has no right to have it according to the industrial property law. In this case, the nullity can only be requested by a person who has this given right.

The term to file this action is eight years from the date of the concession of the patent and five years from the date the registration was issued.

The rights of patent of inventions, registries of utility models and industrial models or drawings will pass to the public domain in the following cases:

• An expiration of its obligation;
• By not covering the dues of rights that are required by Law. To pay these dues, there is a grace period of six months.

The expiration of rights that occurs due to the passing of time does not require an administrative declaration to the Industrial Property Office.

The registration of a industrial model or drawing will be annulled when:

• It is demonstrated that the registry was made against the dispositions of the industrial property law.
• The term to file a nullity action for a registered industrial model or drawing is five years from the registration date. If the registration was requested in bad faith, it may be filed at any time during its validity.

Requirements to file an opposition, cancellation and nullity in Panama

Power of Attorney (legalized by Apostille or the Panamanian Consul).

However, an opposition or cancellation may be filed without the Power of Attorney by posting a bond. In this case, the Power of Attorney should be filed within two months from the date the claim is presented.

Certificate of existence (legalized by Apostille or the Panamanian Consul).

Contributed by the law firm of Morgan & Morgan, a member of the Editorial Board with offices in Panama City, Panama.