General trademark information of Panama

Registration is required to establish rights in a trademark; this is a "first to file" jurisdiction.

• Use of an unregistered mark for any goods or services is legal.

• The following legislation regarding plain packaging has been enacted in this jurisdiction: Plain packaging in the Republic of Panama is regulated by the Law That Protects the Consumer and the Defense of Fair Competition (Law No. 45 of October 31, 2007), and also by Law No. 35 of May 10, 1996 (Industrial Property Law). The packaging of tobacco products is regulated in Panama by Law No. 13 of January 24, 2008, and by Executive Decree No. 230 of May 6, 2008.

A. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is: 12 months.

B. Advantages of Registration

• The benefits of registering a trademark include the following:

• it is the sole means of obtaining rights or title to the trademark;

• it provides prima facie evidence of ownership and validity;

• it provides regional, national and/or local protection;

• it helps to deter others from unlawfully using the trademark;

• it provides a defense to infringement;

• it encourages licensees and provides the opportunity to generate royalties through licensing.
  
  The risk of not registering a trademark is that it allows others to register an identical or similar mark that could impede the ability to use or register the mark in Panama.

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:

• words;

• names;

• devices;

• certain three-dimensional shapes;

• colors (combinations thereof);

• slogans.

• The special requirements for the registration of three-dimensional shapes are: to provide frontal, upward, lateral or side and from-the-bottom views of the mark to be registered as a three-dimensional mark.

• The special requirements for the registration of colors are: Combinations of colors can be registered.

• There are no special requirements for the registration of sounds.

• There are no special requirements for the registration of smells.

• There are no special requirements for the registration of trade dress.

• There are no special requirements for the registration of holograms.

• There are no special requirements for the registration of motion.

• There are no special requirements for the registration of taste.

• There are no special requirements for the registration of touch.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:

• collective marks;

• certification marks;

• service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:

• marks contrary to moral standards or public order;

• generic terms;

• names, flags or symbols of states, nations, regions or international organizations;

• marks that function principally as surnames (Surnames may be registered if used in connection with goods and services; secondary meaning need not be shown.);

• marks that function principally as geographic location names (but not geographical indications or appellations of origin);

• reproductions or imitations of coats of arms;

• acronyms;

• 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;

• 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;

• 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;

• 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);

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

• 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;

• 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.);

• 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;

• 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;

• 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;

• 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;

• 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;

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

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

• 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;

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

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:

• special laws for the protection of geographical indications or appellations of origin (Gls are protected in Panama by means of Law No. 61 of October 5, 2012, which introduced amendments to Law No. 35 of May 10, 1996. Law No. 61 of October 5, 2012, introduced Chapter VI, called Geographical Indications, Indications and Denominations of Origin. This chapter regulates the application, registration proceeding and granting of registration of Gl trademarks in Panama.);

• trademark laws, in the form of collective marks or certification marks;

• laws against unfair competition;

• consumer protection laws;

• specific laws or decrees that recognize individual geographical indications.

• The following products or categories are subject to GI protection in this jurisdiction: coffee from the area of Volcan in the Province of Chiriqui and the pineapples from the area of Chorrera.

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:

• save the applicant the time, effort and cost entailed in developing, adopting and applying to register a trademark in which someone else has prior rights.

• Although conducting a pre-filing search is not mandatory, it is recommended that clearance searches be conducted to determine those trademark applications and/or registrations that may be an obstacle to the registration of the trademark of interest in Panama.

• The national office is accessible online at the following URL: http://www.digerpi.gob.pa.

• The official register can be searched online. However, in the case of old registrations, the information is not updated. As a consequence, in those cases it is recommended that the files be physically reviewed to confirm the information.

• An applicant does not benefit from pre-filing use of a trademark. The right to register a mark is acquired by its use, but the right to its exclusive use is acquired by its registration.

• When a mark is not registered, use of that mark may provide the following benefits:

• Courts may protect unregistered marks in some exceptional cases. In order to oppose the use of a trademark by another person, it is necessary to own a registration of said trademark. It is not necessary, however, to have a mark registered in order to oppose the registration of the mark by another person or in order to seek the invalidation or cancellation thereof, provided the opponent proves earlier use of the same mark.

• Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):

• Famous and well-known marks are registered in Panama through the same registration procedure as for a usual trademark before the Industrial Property Office. However, both famous and well-known marks are given a wider protection, as likelihood of confusion or association is not required in order to prevent new marks that are identical or similar to them from being registered. Furthermore, the Industrial Property Office is still not entitled to give such recognition; no special publication or registry has been created, and in Panama, the recognition of famous and well-known marks is obtained through the courts.

• Panama is a signatory to the following international treaties relating to intellectual property:

• Paris Convention;

• Trademark Law Treaty;

• Nice Agreement.

• If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service. To obtain the registration of a mark, the application petition must state the precise domicile of the applicant, even though he/she is not domiciled in Panama. In addition, as a result of the last amendments introduced to the Industrial Property Law, it has become necessary for the applicant to include in the new application a physical address for judicial or administrative notifications. The physical address is exclusively for judicial or administrative notifications related to the owner of the trademark.

• Joint applicants are permitted in this jurisdiction.

• Either actual use or intent to use is required for application.

• The following information is required to COMPLETE an application:

• name and address of applicant;

• state or country of incorporation;

• description of trademark;

• representation of trademark (a depiction of the mark an applicant seeks to register);

• list of goods/services;

• power of attorney (Only a power of attorney form duly signed by an authorized officer in the name of the applicant is necessary for filing purposes. Notarization and legalization are not necessary.);

• statement of use (If the mark to be filed is in use, a Statement of Use should accompany the new application.);

• dates of first use (If the owner of the mark has the information on first use of his/her mark in the Republic of Panama, this information can be included in the Statement of Use that accompanies the new application, but it is not mandatory.);

• statement of intention to use (If the applicant will file a new application and the mark is not yet in use in the territory of Panama, then the application must be accompanied by a Statement of Intention to Use.);

• official filing fee.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

• name and address of applicant;

• state or country of incorporation;

• description of trademark;

• representation of trademark (a depiction of the mark an applicant seeks to register);

• list of goods/services;

• statement of intention to use;

• official filing fee.

• The list of goods and services in this jurisdiction may specify:

• the relevant class heading, plus a specific list of goods and/or services.

• The following number of copies of the trademark must be submitted: two.

• Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
  • other: In case the trademark is filed without the applicant’s documentation by posting a US$100.00 bond per mark, to guarantee that the required documents, namely original and legalized Power of Attorney and Certificate of Good Standing in the name of the applicant, those documents must be filed in a period of two (2) months following the filing date of the local application.

• In this jurisdiction, the following types of registrations are available:

• national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No multinational regional registrations are available in this jurisdiction.

• Applications cannot be filed online.

• The official file can be accessed online at the following URL: http://www.digerpi.gob.pa.

• Applications are officially searched as to prior trademarks. Once an application is filed, the Panamanian Trademark Office conducts an internal search to verify whether any similar or identical prior application or registration exists in the same class. However, the report is not provided to the applicant, which means it is not possible to anticipate future objections that might be raised by the Office. The approximate length of time for the search is three months.

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

• This jurisdiction uses the Nice Classification System.

• If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services, but separate applications are also permitted.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

• An application to register a trademark may be filed directly in this jurisdiction by:

• a trademark representative/attorney/agent, but only if domiciled in the jurisdiction.

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:

• through publication and online.

• The following application details are made available to the public:

• mark;

• name of applicant;

• address of applicant;

• state or country of incorporation of applicant;

• citizenship of applicant;

• application number;

• application date;

• goods/services;

• priority claim information;

• dates of first use;

• representation of trademark.

• Applications are examined in respect of:

• formalities: i.e., for compliance with the filing requirements;

• classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;

• descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;

• distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;

• conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

• The existence of a valid coexistence agreement between the applicant and the cited registrant will be accepted as evidence permitting registration of the application.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:

• examination, publication, registration.

• Accelerated examination may not be requested.

• The following rights are established by a pending application:

• the filing date of the application establishes a home filing date for purposes of priority;

• the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;

• the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:

• proprietary rights, such as an earlier conflicting registration;

• the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;

• the mark is not distinctive;

• breach of copyright;

• rights under Article 6bis of the Paris Convention (notorious or well-known mark);

• rights under Article 8 of the Paris Convention (trade names);

• registered design rights;

• rights in a personal name;

• rights in a company name.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date: a day after the publication of the mark in the Industrial Property Bulletin.

• The opposition period ends on the following date: two months counted as from the day after the publication of the mark in the Industrial Property Bulletin.

• The following parties may initiate an oppostion:

• any interested party;

• the owner of an earlier right;

• a licensee.

• Oppositions can be filed online. The evidence stated in the complaint must be presented within the following three days before the specialized court handling the case.

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

• An application can be assigned, but the Trademark Office will continue with the registration procedure, and, when it is concluded, will assign the mark of interest.

• A registration can be assigned.

• An assignment of an application must be made for the entire territory covered by the application.

• An assignment of a registration must be made for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:

• name of assignor;

• address of assignor;

• citizenship of assignor;

• name of assignee;

• address of assignee;

• citizenship of assignee;

• details of the trademark being assigned;

• goods and services being assigned;

• territory being assigned;

• signature by assignor;

• signature by assignee;

• consideration (either actual or nominal).

• An assignment document for a registration requires:

• name of assignor;

• address of assignor;

• name of assignee;

• address of assignee;

• details of the trademark being assigned;

• goods and services being assigned;

• territory being assigned;

• effective date of the assignment;

• signature by assignor;

• signature by assignee;

• consideration (either actual or nominal).

• Legal verification of a written assignment document of an application is required by:

• notarization;

• legalization.

• Legal verification of a written assignment document of a registration is required by:

• notarization;

• legalization.

• An assignment of an application must be recorded to be effective.

• An assignment of a registration must be recorded to be effective.

• Use of a mark that is the subject of an application can be licensed, but the license will be recorded before the Trademark Office only when the registration of the mark is granted.

• Use of a registered mark can be licensed.

• In this jurisdiction, recordation of a registered trademark user is an alternative means of registering the rights of another to use the mark.

• A license of an application must be made for the entire territory covered by the application.

• A license of a registration must be made for the entire territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).

• A license of an application can be sole (only one licensee and the owner).

• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be exclusive (only one licensee, with the owner excluded). (Registration of an exclusive license agreement must be between the owner of the trademark registration and the licensee.)

• A license of a registration can be sole (only one licensee, and the owner).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• The following requirements relate to the use by a related company of a mark that is the subject of an application: The mark must be registered as well as the license in order to be enforceable against third parties.

• Use by a related company of a registered mark must be licensed.

• A license of an application can be made with a time limitation. Please note that the license agreement must include a clause indicating the term of the license.

• A license of a registration can be made with or without a time limitation. The law requires that the license agreement include a clause with the term and duration of the license agreement, which may also indicate that it is indefinite.

• A license document for an application requires:

• name of licensor;

• address of licensor;

• citizenship of licensor;

• name of licensee;

• address of licensee;

• citizenship of licensee;

• details of the trademark to be licensed;

• goods and services being licensed;

• commencement date of the license;

• term of the license;

• territory of the license;

• signature by licensor;

• signature by licensee;

• express permission to sublicense, if appropriate.

• A license document for a registration requires:

• name of licensor;

• address of licensor;

• citizenship of licensor;

• name of licensee;

• address of licensee;

• citizenship of licensee;

• details of the trademark to be licensed;

• goods and services being licensed;

• term of the license;

• if the license has no limitation of time, a statement so indicating;

• territory of the license;

• quality control provisions;

• simple signature by licensor (see below for execution requirements);

• simple signature by licensee (see below for execution requirements).

• Legal verification of a written agreement to license an application is required by:

• notarization;

• legalization.

• Recordation of a license of an application is not permitted. A license in a pending application cannot be officially recorded until the application matures into registration. Thus, a license of an application will be recorded before the Trademark Office only when the registration of the mark is granted.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:

• notarization;

• legalization.

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:

• power of attorney, without further formalities;

• deed of assignment, legalized by the respective consulate/apostille;

• certificate of proof of change of name, legalized by the respective consulate/apostille;

• certificate of merger, legalized by the respective consulate/apostille.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

• power of attorney, without further formalities;

• certificate of proof of change of address, legalized by the respective consulate/apostille.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

• power of attorney;

• petition writ requesting the recording of liens;

• resolution issued by the specialized civil court ordering the recordal of a lien against a trademark registration;

• payment of official fees.

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:

• none.

• The following rights are established by registration:

• the exclusive right to use the registered trademark;

• the right to oppose subsequent conflicting applications;

• the right to bring a cancellation action against a subsequent conflicting registration;

• the right to sue for infringement against confusingly similar third-party trademark use;

• the right to license third parties to use the trademark;

• the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;

• the right to obtain damages for infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

• never.

• The territorial limit of registration is: Panama.

• The initial term of a registration is:

• 10 years.

• The beginning of the term of a registration is calculated from:

• the application date.

• Marking is not compulsory for registered trademarks, but is advisable because: it will put others on notice and could persuade potential infringers to refrain from using the mark.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

• TM;

• ®.

• The use of ® is legally recognized. Although marking is not required, the use of the letter R or M.R. (Marca Registrada) on a mark that is not registered is considered an unlawful use of trademark rights.

• The legal consequences of false or misleading marking are: Inadequate notice of an unregistered mark would be considered improper use, and accordingly a sanction would be applied--for instance, a fine between USD 10,000 and 200,000 plus a suspension of the right to engage in commercial or industrial activities for a period of three months, among other sanctions.

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time: five consecutive years prior to the date of filing of the cancellation action. However, such actions can be filed only after the mark has been registered for five years.

• To satisfy the use requirement, the amount of use:

• can be minimal. "Use" refers to local sales of the products or rendering of services under the subject mark. Local sales via the Internet are also considered local use.

• Use of the trademark must occur in:

• this jurisdiction.

• The consequences of a trademark’s not being used are as follows: The trademark registration may be canceled on the ground of non-use of the trademark for five consecutive years, counted from the date of filing of the request for cancellation.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:

• any interested third party.

• Non-use can be excused under the following circumstances: None.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

• brought an action for cancellation of the trademark on the ground of non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

• Cancellation is available against registrations. Nullity actions are also available against registrations. 

• The following can be grounds for cancellation:

• the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;

• the mark is misleading, deceptive or disparaging;

• the mark is functional;

• rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags and other State emblems);

• the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

• the mark consists of a geographical indication;

• the mark is against public policy or principles of morality;

• the mark includes a badge or emblem of particular public interest;

• the application for or registration of the mark was made in bad faith;

• express renunciation by the owner;

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

• expiration of the term of the registration without renewal's having been requested at the appointed time and in the manner provided for in the law;

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

• Besides the above-mentioned cancellation grounds, it is possible to file nullity actions as established by Article 91 of the Industrial Property Law; to wit, the following may not be registered as trademarks or as elements thereof:

• 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;

• 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;

• 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;

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

• 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;

• 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, confusion, unintentional substitutions or misapprehension 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.);

• 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;

• 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;

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

• 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;

• 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;

• 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;

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

• See Section VII.A. Use Requirements.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is: The action must be initiated at least five years after the registration is granted. In the case of cancellation resulting from a nullity action, if grounded on absolute or relative grounds (Article 91), the action can be initiated, since the mark is registered. However, if more than 10 years has passed, the only valid ground would be bad faith.

• The following parties may bring a cancellation action:

• any interested party;

• the owner of an earlier right;

• a licensee.

• Cancellation actions can be initiated online at the following URL: The evidence stated in the complaint must be presented within the following three days before the specialized court handling the case. Please note that the URL is available only to a recorded Attorney at Law before the specialized courts that handle IP cases.

• The following documentation is required for renewal:

• power of attorney (duly signed by an authorized officer in the name of the applicant; notarization and legalization are not required).

• The first renewal date of a registration is:

• 10 years from the application filing date.

• Subsequent renewals last for the following period of time:

• 10 years from the renewal date of the registration.

• The renewal pre-payment period is:

• no more than the following number of years before the renewal date: In order to obtain the renewal of a trademark or service mark, a petition must be filed before the Trademark Office within a year before the expiration date of the registration.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:

• 6 months.

• The penalty for late renewal is:

• a fine.

• Renewal cannot be effected online.

• At the completion of renewal, a new registration number is not issued.

I. Pre-filing Requirements/Demand Letters

A. Pre-filing Requirements/Demand Letters

• It is neither mandatory nor common to send a demand letter before instituting infringement proceedings in this jurisdiction.

• It is neither mandatory nor common to attempt to settle with the other party before instituting infringement proceedings in this jurisdiction.

• It is neither mandatory nor common to engage in mediation or other alternative dispute resolution proceeding with the other party before instituting infringement proceedings in this jurisdiction.

• Before initiating an infringement proceeding, a party is required to take the following actions: none.

• Before initiating an infringement proceeding, a party may take the following actions: provide some evidence of the infringement.

• There is more than one court system or administrative body that has jurisdiction over claims for infringement of a registered trademark (see below) (civil and criminal courts).

• The court system or administrative body that most frequently hears claims for infringement of a registered trademark is: the criminal courts.
  
  Pursuant to the Penal Code, the manufacturing of counterfeit products or products identified with trademarks that imitate a registered trademark is punished with four to six years of imprisonment. The same penalty will be imposed on whoever commercializes, imports, exports, or puts into circulation or in transit through the country products identified with counterfeit marks or marks that imitate a registered trademark or offers or renders services identified with counterfeit marks or marks that imitate a registered trademark.
  
  The aforesaid acts are criminally prosecuted ex officio, and criminal prosecution is not subject to the filing of any damages bonds. In criminal proceedings, criminal intent must be shown. The main stages of criminal proceedings are: search and seizure, investigative stage before the IP DA's Office, arraignment hearing, trial, ruling and sentencing. The criminal court's decision can be challenged up to the Supreme Court.

• The other court system or administrative body that can also hear claims for infringement of a registered trademark is: the civil courts.
  
  In civil cases, trademark infringement includes trademark counterfeiting activities (both manufacturing and distribution), as well as the use of a mark in connection with products or services that clearly denotes the intention to imitate a registered trademark that protects the same or related goods/services or different goods/services (in the latter case, if there is risk of confusion or false association with the registered mark).
  
  Civil cases must be initiated by the registered owner of the trademark, and the plaintiff is subject to the filing of damages bonds. The main stages of civil proceedings are: search and seizure, examination of business records, preliminary injunctions, filing of complaint, answer to complaint, evidentiary hearing, and ruling. The civil court’s decision can be challenged up to the Supreme Court if the damages claim exceeds USD 25,000. If not, it can be appealed only before the appellate court.

• The following factors determine which court or administrative body can hear a case:

• place of alleged infringement;

• residence of defendant.

• The following parties have standing/authority to institute proceedings for infringement of a registered trademark:

• the registered proprietor of a mark.

• If there is more than one registered proprietor/owner, they must all join in instituting the proceedings, except in civil cases.

• Trademark infringement proceedings are decided by a judge with no jury.

• The time limit for initiating trademark infringement proceedings is: six years.

• Once infringement proceedings are initiated, the stages of the proceedings include:

• filing of claim (including presentation of facts and legal arguments);

• filing of reply/defense to claim;

• filing of counterclaim;

• filing of evidence;

• mediation (can occur during the proceedings);

• expert discovery;

• dispositive motions;

• preliminary motions (to dismiss, for preliminary injunction or for temporary restraining order);

• filing of briefs/written arguments;

• oral hearing;

• oral testimony/examination of witnesses;

• trial;

• judgment/decision;

• damages (or other financial relief) assessment.

• The average amount of time from the instituting of infringement proceedings through the trial/final hearing is:

• between six months and one year.

• The average amount of time from the end of the trial/final hearing to the issuance of judgment is:

• in criminal cases, up to three months; in civil cases, between three and six months.

• Unregistered trademarks are protected under the following laws:

• trademark statute (only famous marks, that is, the ones known by the public in general, and only in civil cases).

• The following parties have standing/authority to institute proceedings for infringement of an unregistered trademark:

• the owner of the unregistered right.

• If there is more than one owner of an unregistered trademark, they need not all join in instituting the proceedings.

• It is possible to institute a single proceeding for both registered trademark infringement (under the trademark law) and unregistered trademark infringement (under the law(s) listed above).

• Ex parte injunctions are available to claimants seeking emergency relief. Although they are available, it can take several weeks to obtain the grant of an injunction.

• When applying for an ex parte injunction, it is necessary to institute infringement proceedings at the same time, for criminal proceedings; for civil proceedings, it is not necessary to institute infringement proceedings at the same time.

• The types of ex parte injunction available include:

• prohibitory (to prohibit the defendant from performing certain acts);

• mandatory (to require the defendant to perform certain acts).

• There is no specified statutory or court-determined deadline for seeking an ex parte injunction.

• A delay in applying for an ex parte injunction after becoming aware of the alleged infringing activities cannot prevent the applicant from obtaining the desired relief.

• The purpose of an ex parte injunction is:

• to restrain further infringing activities until trial or a further hearing;

• to prevent the consequences of an infringement or violation;

• to obtain or preserve evidence;

• to ensure the effectiveness of the eventual remedy;

• to prevent irreparable injury;

• to secure compensation.

• The strategic benefits of obtaining an ex parte injunction include:

• it may put an end to the infringement and litigation quickly;

• it may save costs;

• putting the defendant at a strategic disadvantage at the beginning of the case;

• obtaining or preserving evidence;

• ensuring the availability of the requested remedy;

• ensuring the availability of compensation for damages;

• reducing potential damage caused by infringement.

• The risks of seeking an ex parte injunction (if it is not granted) are:

• increased costs of the proceedings.

• An ex parte injunction remains in place:

• until a decision is made in the main proceedings.

• The defendant is notified of the grant of an ex parte injunction:

• by the court.

• The procedure for applying for an ex parte injunction includes the following:

• motion;

• supporting memorandum/points and authorities of law;

• supporting documentary evidence;

• order;

• posting bond, cross-undertaking or other security.

• The amount of the bond or the cross-undertaking (i.e., an undertaking in damages) is determined based on:

• statutory provisions (The amount of the bond will be up to 50 percent of the appraisal (dollar value) of the counterfeit or infringing merchandise. It is usually set at 20 to 25 percent.).

• If the case deals with infringement of a service mark, the amount of the bond will be subject to the judge's discretion.

• The factors considered in the granting of an ex parte injunction are:

• balance of convenience or hardships; i.e., consideration of the hardship to each side arising from the grant or from the denial of the injunction;

• urgency.

• The following forms of evidence are admissible in support of an ex parte injunction application:

• documents;

• affidavits;

• samples of infringing product(s).

• If the court later finds that the ex parte injunction was granted in error, the applicant will be required to:

• forfeit its bond, which is paid to the defendant. The defendant may claim damages suffered from the injunction, and if they are properly proven and exceed the amount of the bond, the applicant will be required to compensate the total amount of damages.

• The cost of obtaining an ex parte injunction, including attorney fees and court costs (but not including the cost of a bond), is approximately:

• less than USD 10,000.

• The costs of an ex parte injunction are recoverable as follows: If the plaintiff wins the case, the defendant will be bound to reimburse all expenses associated with the proceedings, including the ones involved in the injunction proceedings. The court will also order reimbursement of attorney fees, including the ones involved in the injunction proceedings, but the amount to be granted will be subject to the judge's discretion.

• On average, an ex parte injunction is issued within the following time period (counting from the filing of the application to the issuance of the injunction):

• between 10 and 30 days.

• In an ex parte proceeding, a party may request an order to enter the premises of another party and to search for property/documents/items that may become evidence (i.e., a “search order” or “search and seizure order”).

• The following party or parties will be present at the inspection:

• the judge(s);

• the party who obtained the order;

• the party against whom the order is granted;

• the party's/parties' legal representative(s);

• witnesses and expert witnesses (Witnesses and expert witnesses will be present under both a search order and a search and seizure order.).

• In an ex parte proceeding, a party may request an order to freeze the assets of another party to prevent dissipation of the assets before conclusion of the proceedings (i.e., a “freezing order” or “freezing injunction”).

• The grant of an ex parte injunction can be appealed.

• Appeal of a decision granting an ex parte injunction cannot be expedited.

• The denial of an ex parte injunction can be appealed.

• Appeal of a decision denying an ex parte injunction cannot be expedited.

• Interim inter partes injunctions are not available to claimants seeking emergency relief.

• A party can seek to end proceedings prior to trial or final determination by interim applications for:

• striking out or dismissing a party’s case on the pleadings.

• Proceedings cannot be expedited through an early trial or hearing on a preliminary issue.

• The following forms of evidence can be relied upon in support of a claim in trademark infringement proceedings in this jurisdiction:

• documentary evidence (including samples/photos of allegedly infringing items);

• expert evidence;

• oral testimony;

• survey evidence.

• The following forms of evidence can be relied upon in defense of a claim in trademark infringement proceedings in this jurisdiction:

• documentary evidence;

• expert evidence;

• oral testimony;

• survey evidence.

• A claimant must present or give notice of any evidence on which it will rely at a time set by the tribunal, at the evidentiary hearing.

• A defendant must present or give notice of any evidence on which it will rely at a time set by the tribunal, at the evidentiary hearing.

• A party to the proceedings may obtain information that is within the possession or control of another party to the proceedings:

• at the request of the tribunal.

• Evidence may be presented at the trial or oral hearing in the form of:

• written witness statements (including, e.g., affidavits, depositions, or statutory declarations) (To be admissible, a written statement must be recognized by the witness during the trial.);

• oral testimony of witnesses;

• documents;

• surveys;

• physical objects;

• expert testimony.

• It is possible to introduce surveys in evidence for the following issues:

• secondary meaning/acquired distinctiveness;

• whether a mark is famous or well known;

• likelihood of confusion;

• dilution;

• genericness.

• The use of survey evidence is subject to the following requirements: It must be ratified by the expert that prepared it and subject to cross-examination during trial.

• The length of an average trial or final hearing in a civil action for trademark infringement is: two to four days (but not consecutive days).

• The nature of the proceedings is:

• adversarial, i.e., the proceedings are driven by the parties and their representatives (e.g., the litigants control and present evidence) and the decision maker plays a relatively passive role.

• A trial or final hearing includes the following:

• opening statements by counsel for each party;

• plaintiff’s case through examination of witnesses by plaintiff;

• defendant’s case through examination of witnesses by defendant;

• plaintiff’s case through examination of witnesses by judge;

• defendant’s case through examination of witnesses by judge;

• plaintiff’s rebuttal case;

• cross-examination of witnesses by parties;

• closing argument by counsel for each party.

• A trial or final hearing includes the following:
  • introduction by judges;
  • discussion of factual issues and/or evidence;
  • discussion of legal issues;
  • questions to parties;
  • statements of parties;

• Witnesses are examined by:

• the judge;

• the lawyers.

• As part of trial preparation, the parties do the following:

• provide draft findings and conclusions if the proceeding is to be decided by a judge (opening and closing arguments);

• submit marked exhibits;

• provide stipulations of fact;

• stipulate as to the authenticity of the documents;

• identify trial witnesses;

• consider possibility for settlement.

• It takes approximately the following amount of time for a decision to be handed down after trial or final hearing: for criminal cases, 24 hours under the new adversarial system; for civil cases, three to six months.

• The decision may be appealed within the following time frame: in criminal cases, two days after service of the decision to file the notice of appeal; in civil cases, three days after service of the decision to file the notice of appeal.

• Appealing a decision is of right; no permission is needed.

• There is only one court to which an initial appeal can be made, which is: in criminal cases, the Superior Courts of the Republic of Panama, depending on where the infringement occurred or where the defendant resides; in civil cases, the Third Superior Court of the Panama City District.

• The appeal court reviews:

• both the facts of the case and legal issues. If only one party appeals, the appellate court will review only the facts and legal issues pointed out by that party. If both parties appeal, the appellate court can review all the facts and all legal issues, regardless of whether they were brought up by the parties in the appeal.

• Further appeal is possible to the following court: the Supreme Court. In civil cases, there must be a minimum damages claim of USD 25,000.

• Further appeal is granted as a matter of right; no permission is needed.

• A defendant has the following length of time to comply with an order issued in a judgment: the time set forth by the judge. In civil cases, the damages and legal costs/attorney fees awarded must be paid within six business days after the judgment has become final. In civil cases, if the judge does not specify the time during which the defendant must comply with the delivery of a certain thing or the performance of a certain act, the term to do so will be six business days as of the date the judgment becomes final.

• A judgment may be enforced by way of the following proceeding(s): executory proceedings.

• The types of costs that may be recovered by the prevailing party during/after legal proceedings include:

• attorney fees;

• expert fees;

• bond or security for costs;

• copying costs (for producing documents, in discovery, typically);

• witness fees (for third-party witnesses);

• costs incurred by a party or its witnesses (for travel, food, lodging or other expenses).

• A range for the all-inclusive cost of a typical action for trademark infringement from the filing of the claim through the trial is as follows:

• for criminal cases, less than USD 20,000; for civil cases, between USD 20,000 and 50,000.

• The successful party in a trademark infringement claim can expect to recover a portion of the attorney fees incurred (as distinguished from damages awarded). See below.

• The average percentage of attorney fees incurred in a trademark infringement claim that a successful party can expect to recover is:

• 50 percent.

• Attorney fees are assessed using the following method(s):

• a fixed fee schedule (established by the Panamanian Bar Association);

• the complexity of the case.

• When initiating proceedings, a plaintiff may be required to provide security for any costs that may eventually be awarded against it, but only in civil cases and if preliminary injunctions were requested and granted.

• A defendant may be required to provide security for costs after proceedings are initiated, but only in civil cases and if it is requested by the plaintiff.

• Application for security for costs is made via the following procedure: In the case of security to be filed by the plaintiff, it is requested by the court. In the case of security to be filed by the defendant, it must be requested by the plaintiff through a special motion.

• For the court to grant security for costs, the following conditions must be met:

• the plaintiff requested a preliminary injunction.

• An application for security for costs can be made at the following stage of the proceedings: before preliminary injunction motions are decided. If it is the plaintiff requesting security for costs from the defendant, it must be requested together with the complaint.

• In granting security for costs, the court may make the following orders:

• the amount of the security;

• the time frame in which the security must be given.

• An order for security for costs may be appealed under the following circumstances: if it is excessive or too low.

• If security is ordered, it is customarily provided in the form of:

• bond/payment to the court;

• third-party guarantee (from an insurance company).

• The following monetary remedies are available for trademark infringement:

• accounting of defendant’s profits and actual damages.

• Actual damages are assessed using the following methods:

• lost profits of plaintiff;

• constructive license fee/reasonable royalty;

• the value of the infringing products in a lawful market.

• Where both are available, a party can choose whether to receive damages or an accounting of profits.

• Determination of the type and amount of remedy is part of the trial on liability in civil cases. In criminal cases, determination of the type and amount of remedy is not part of the trial on liability and occurs only after a final judgment on liability has been made.

• The following non-monetary remedies are available for trademark infringement:

• injunctions (including suspension of the business operation permit for up to three months; in cases involving defendants operating in the Colon Free Zone, suspension for a minimum of three months or revocation of the operation permit);

• delivery up of infringing labels, packaging or products;

• destruction;

• disposal;

• removal or obliteration;

• public dissemination of judgment.

If you would like to know the trademark registration process of Paraguay ? Click on here!

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