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I. INTRODUCTION - WHY PANAMA ? The Republic of Panama has the largest duty free zone in the Western Hemisphere, for which registration of trademarks and patents there is very important. Every year, millions of dollars in goods, merchandise and services are imported, manufactured, assembled and re-exported to or from Panama´s Duty Free Zone, export processing zones and financial center. This activity originates in the far east and ends in South and Central America, the Caribbean, North America and Europe and vice-versa. Trademarks of many of these products are put in Panama, before their exportation or re-exportation. This is the strongest reason to consider the registration of trademarks, patents and other industrial property in the Republic of Panama. II.
GENERAL INFORMATION 2. The exclusive right of a trademark is obtained through its registration at the Directorate General of Registration of Industrial Property, of the Ministry of Commerce and Industries. 3. The certificate of registration of a trademark is granted for a period of five (5) or ten (10) years, renewable indefinitely for equal periods of time. 4. The registration of a trademark will only protect it within the class in which it has been registered. 5. The Republic of Panama adopted the International Classification of Trademarks for products and services by Decree No. 107 of August 12, 1981. 6. The following elements, among others, shall constitute trademarks: a) Words or combination of words, including those identifying persons; b) Pictures, figures, symbols and graphics;
c) Letters, numbers and their combinations, when constituted by characteristic
elements;
e) Colors in its different combinations; 7. The following shall not be registered as trademarks nor as elements thereof: a) The copies or imitations of coat-of-arms, flags and other symbols, acronyms, denominations or abbreviations of denominations of any State or any national or international organization, without proper authorization; b) Those consisting, as a whole, in descriptive indications of the nature, characteristics, use or application, specie, quality, quantity, destination, value, of the place of fabrication or origin, or of the period of production, of the product or the rendering of the pertinent service, as well as the expressions constituting the usual or generic denomination of the product or service. Excluding the descriptive or generic trademarks being different or unique due to their use; c) The three-dimensional figures or forms which can deceive the public or lead them to error, being understood those constituting false indications on the nature, components or qualities of the products or services to be covered; d) The denominations of populations or places characterized by the fabrication of certain products, to cover these, except the names of places of private property, when special or unmistakable and with the consent of the owner; e) Those contrary to the ethics, public order or good habits; f) The names, pseudonyms, signatures and portraits of persons different to those requested by the register, without their consent or, if deceased, the consent of the heirs. Excluding the cases of portraits or names of historic personalities; g) The designs of coins, bills, guaranty or control seals used by the State, postage stamps, government stamp seals or similar in general; h) Those including or reproducing medals, prizes, diplomas and other elements, which assumes that acknowledgments have been received with respect to the corresponding products or services, except that such rewards have really been conferred to the petitioner of the registry, or to the person having assigned his right and credited when requesting the registry;
i) Those identical, similar or alike in an orthographic, graphic, phonetic,
visual or conceptual aspect with another trademark used, known, registered
or in process of being registered by another person, in order to distinguish
products or services alike, of the same class or similar to those to
be covered with the new trademark, provided that said similarity or
identity, of one and the other, will create in the mind of the public,
errors, confusions, mistakes or misunderstandings in relation to those
products or services, or its origin. j) Those similar or alike to a famous or renown trademark, to be applied to any product or service; or those widely known or well-known, to be applied to determined products or services according to the consumer group it is addressed to; k) The geographic denominations, characteristic or common, and maps, as well as the names and adjectives, among them, gentiles, when indicating the origin of the products or services and which may create confusion or error in relation thereto;
l) Those basically consisting in the translation to the Spanish language
of one already used, known, registered or being registered, to distinguish
products or services alike or similar; n) The three-dimensional forms lacking originality which distinguish them easily, as well as the usual and common form of the products or due to its nature or industrial operation; o) The denominations, figures or three-dimensional forms, animated or changeable, expressed in a dynamic manner, even when visible; p) Titles of literary, artistic or scientific works and the fictitious or symbolic characters, except with the consent of the author when, pursuant to the pertinent law, his rights are in force, as well as the characterization of the human characters, if lacking his agreement; q) Isolated letters, numbers or colors, unless combined, constituted or including elements such as signs, designs or denominations, distinguishing them; r) The words, letters, characters or signs used by native communities, religious or non-profitable associations, to distinguish the form of processing products, completed products or services, as well as those constituting the expression of its cult or custom, idiosyncrasy or religious practice, except the petition is made for its benefit by one of the aforementioned communities or associations; s) Those whose designs are based in monuments and national historic sites, acknowledged as such by the law. 8. With each petition only one trademark must be included and in one class only, indicating the products or services comprehended by the trademark. Registration in each class will constitute a single petition. That is, if a trademark is to be registered in three (3) different classes, then three (3) separate petitions must be filed, one in each class. 9. Once the registration is completed, new products or services may not be included for their protection but instead, they may be limited as many times as requested. 10. Registration of trademarks in Panama are made following the international Classification of Trademarks for Products and Services. III. PETITION The petition for the registration of a trademark must be filed at the Directorate General of Registration of Industrial Property, of the Ministry of Commerce and Industries, which is in charge of processing them. In order to file a petition for the registration of a trademark, the following documents are required: 1.
Power of attorney in favor of VIVES Y ASOCIADOS to file the petition
(See Appendix).* * All documents executed outside Panama (Power of Attorney and Affidavit) must be authenticated either with the "Apostille" (Convention de la Haye du 5 octobre 1961) or by a notary public and legalized by the nearest available Panamanian Consul abroad. If there is no Panamanian Consul in the jurisdiction in which the documents are issued, legalization by the Consul of a friendly nation shall suffice for this purpose. Once the petition has been filed at the Directorate General of Registration of Industrial Property, it must then be published once (1) in the Industrial Property Bulletin, the official publication of the Ministry of Commerce and Industries. If after a period of sixty (60) days from the date of publication no opposition to the registration petitions is presented, the registration of the trademark is granted and a certificate of registration is issued. IV. OPPOSITION The objective of the opposition process is to "oppose the registration of a trademark. Every person considering to have the right to oppose may do so. Any writ of opposition must be filed in Court within sixty (60) days from the date of publication of the petition at the Industrial Property Bulletin. The petitioner of the registration of the trademark must answer the opposition within five (5) working days from the date on which notice of the opposition was served to him or his attorney. The litigation at the Court will last at least one year. V. RENEWAL
Petitions for the renewal of a registered trademark must be filed within
a period of one year (1) before and six (6) months after the registration
expires. If the petition for renewal is entered within six (6) months
after the expiration date, a surcharge will be applied. If the petition
is not filed during this time, the registration shall lapse. VI. LICENSE AGREEMENTS In order to register a license of use of a trademark, a petition must be filed at the Directorate General of Industrial Property. Said petition must contain the following information: 1. Name, nationality and address of both parties (grantor and licensee) 2. Name, denomination and/or description of the trademark, indicating the number and date of its registration. 3. Specification of the products or services subject to the license of use. 4. Type and term of duration of the license. The following documents must be attached to the petition: 1. Power of attorney from the owner, in favor of VIVES Y ASOCIADOS, duly legalized as previously explained. 2. A legalized copy of the License Agreement. The cancellation of a License Agreement shall occur in the following cases: 1. When requested by both parties. 2. When requested by one party, according to the terms of the License Agreement. 3. Because of nullity or expiration of the Agreement or cancellation of the trademark. 4. Due to a court order. VII. ASSIGNMENT Trademarks may be assigned by filing at the Industrial Property Department the proper petition and the following documents: 1. An instrument of assignment or an official document issued by the country of the original registration in evidence that an assignment has been made, legalized with the apostille seal or by the nearest Panamanian Consul.
2. Power of attorney from the assignee, legalized as previously explained. A writ requesting the cancellation of a trademark already registered can be filed at the Court by any person considering to have rights upon the trademark within a period of ten (10) years after registration of the trademark. IX. FEES AND EXPENSES
The cost for the registration of a trademark before the Directorate
General of Industrial Property is of US$ 600.00, including office expenses
and registration fees. It is possible to obtain the registration of patents originating in Panama and revalidation of patents granted abroad. Registration of patents may be granted for a maximum period of twenty (20) years. In the case of foreign patents, the revalidation issued in Panama will be granted for the unexpired or remaining period of the foreign patent, but will never be granted for a period longer than twenty (20) years. Once a patent has expired it may be registered again, but not renewed.
The registration of utility models will be granted for a maximum period
of ten (10) years. In order to apply for the registration of patents, the following documents are required: 1. Power of attorney in favor of VIVES & ASOCIADOS. (see Appendix). 2. Petition filed by the law firm. 3. A document containing a complete description of the invention and its applicable use and solutions. 4. Three (3) copies of the specifications and claims. 5. Three (3) sets of the respective drawings. 6.
Assignment by the inventor in favor of the petitioner, if not requested
directly by him, duly legalized as previously indicated. Any opposition complaints must be filed within sixty (60) days from the date of publication of the petition in the Industrial Property Bulletin. The applicant must answer the opposition complaint within a period of five (5) working days from the date in which notice of opposition was served to him or his attorney. The answer must contain all favorable documentary evidence available to the defendant.
It is also possible to request the cancellation of a patent already
granted for the reasons established in the law. The cost for the registration of a patent before the Directorate General of Industrial Property is of US$ 600.00, including expenses. Click here to view the printable page of the POWER OF ATTORNEY.
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