Trademark Registration in Panama

Overview of Trademark Registration in Panama

The legislation governing Trademark Registration in Panama is Law 35, dated 10 May 1996, modified by Law 61 dated 5 October 2012.  The new legislation permits for filing of multiple applications for Trademark Registration in Panama. The applicants are further required to appoint a local lawyer.

The updated legislation also establishes a Power of Attorney Registry; however, there hasn't been any regulation in respect of the same. Post the registration of the Power of Attorney, there won't be any need for the submission of the POA with each registration or renewal application as the same shall be sufficed by providing a reference of the registration details. It is essential for the POA to be legalized, and in case it is granted in any other language, there is a need to translate the same into the Spanish Language.

Another modification is regarding the evidence of the existence of the applicant's company, wherein the applicant won’t be required to provide a certificate to prove the existence of his company; however, the information with regard to the registration details and jurisdiction must be declared.

There is a requirement for a domicile in Panama for administrative and judicial purposes. The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Prior to registration, the trademark application is published in the “Boletin del Registro de Propiedad Industrial”.

Eligible Trademarks for Trademark Registration in Panama 

The following elements, among others, may constitute trademarks:

• Words or combinations of words, including those serving  as the identification of persons;
• Images, figures, symbols and graphic material;
• Letters, figures and combinations consisting of distinctive elements;
• 3D shapes, inclusive of the wrappers, packaging or shape of the product, its  presentation and holograms;
• Colours in various combinations;
• Any combination of the elements non-exhaustively listed above

Ineligible Marks

The following are ineligible marks for Trademark Registration in Panama

1. Reproductions or imitations of flags, coats of arms, and other emblems, acronyms, names or abbreviated names of any State or national or international organization, without proper authorization;
2. Marks constituting 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 now become distinctive or special through use;
3. Figures or 3D shapes which can deceive or mislead the public are understood as being those conveying a false impression as to the nature, components or properties of the goods and services intended to be covered by them.
4. The names of peoples or places known for the manufacturing of certain goods, used for  covering those goods,  except the names of places in private ownership where they are special and not prone to confusion and the owner’s consent has been  duly obtained;
5. Signs that are in contravention of morality, public policy or proper practice;
6. Names, pseudonyms, signatures and portraits of persons different from the one applying for registration, without the prior consent of those persons or, if they are deceased, that of their heirs, with the exception of portraits or names of historical figures;
7. The designs on coins, banknotes, hallmarks that denotes control or warranty used by the State, seals, stamps or tax imprints in general;
8. 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;
9. 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;
10. Marks which  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;
11. Common or Proper geographical denominations, maps, and also nouns and adjectives, including gentilics, which denote the source of the goods or services and are liable to cause confusion or mistakes regarding that source;
12. Marks consisting of basically the Spanish translation of another mark that is already used, known, registered or undergoing registration to distinguish identical or similar goods or services;
13. Marks that are total or partial reproductions, imitations, translations or transcriptions which can lead to deceiving, confusing  or misleading  the public of a nationally or internationally known trade name  that belongs to a third party and is in use prior to the date of the application for registration as a trademark;
14. 3D shapes lacking such originality as will be readily distinguishing them, and also the usual and everyday shape of goods or that which is dictated by their nature or industrial functions;
15. Animated or changing names, figures or three-dimensional shapes that are expressed by movement, even where they are visible;
16. 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;
17. Letters, numerals or colours in isolation, with an exception to cases where they are combined with or constituted or accompanied by elements such as signs, designs or denominations that give them distinctive character;
18. 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;
19. Marks using references to national historical monuments and sites have been recognized as such by Law as the basis for their design.

Details and Documents Required for Trademark Registration in Panama

Filling the Application

The application must be filed in the prescribed manner along with the prescribed Documents.

The applicant must provide the below-mentioned details and Documents to the competent authority for the purpose of registration of a trademark in Panama

• The name, nationality, full address and personal identity card or Document number of the applicant and attorney;
• a itsl egal entity, its business style, place of incorporation and full address;
• The name or design of the trademark, or both, as used on the market;
• A list of the goods or services regarding which the trademark is or shall be used.

The application must be accompanied by the  below mentioned elements:

• In the case of an unofficial proceeding, the guarantee certificate, otherwise
• A power of attorney which, in the case of a legal entity, shall have a notarized statement or certificate attesting the existence and legal representation of the said entity or, failing that,
• A certificate issued by a competent authority.
• If its a foreign corporation, the said certification may be issued by a competent authority of the country of its incorporation;
• A sworn statement concerning the use of the trademark;
• 6 labels featuring the trademark or a representation thereof in the form of a drawing, one of which shall be affixed to the application;
• Proof of payment of the registration, recording and publication fees;
• The claim of a right of priority, if any, as per the international treaties.

Procedure of Trademark Registration in Panama

The detailed procedure for Trademark Registration in Panama is discussed below –

Trademark Search

The applicant must conduct a preliminary trademark search before filing the application to avoid any similarity or duplicacy of an earlier registered trademark.

Examination

 The examination of the application shall be conducted by the DIGERPI for determining the applicant’s adherence to the requirements enumerated in legislation.

• Information about non Adherence of Requirements

If the authority finds out that there has been a non-adherence of the prescribed requirements by the applicant, the authority shall inform the applicant about the same for the purpose of rectification of the error or omission within a period of 3 months counted from the service of the notice,  along with a warning that, on the expiration of the said period without the rectification of the error or omission, the application shall be considered abandoned, in which case the consignment of the file to the archives shall be ordered.

• Determination of any Substantive Prohibitions as per Law

Upon the completion of the examination pertaining to the fulfilment of the prescribed requirements, the application shall be further examined, an examination shall be further examined for ascertaining the existence of any of the substantive prohibitions provided for in this Law affecting the application

If DIGERPI considers that any of the said prohibitions does apply, the application shall be rejected not before issuing a reasoned decision rejecting the application for registration and the consignment of the application concerned to the files shall be ordered.

Publication

Where the application for registration is found to be in order, a single publication thereof in BORPI, mainly with the following details, shall be ordered:

• of the application;
• Date of filing;
• Date of priority;
• Country of origin;
• International classification;
• Distinctive sign;
• Goods or services covered;
• Information concerning colours and claims;
• Name, nationality and address of the applicant;
• Legal agent.

Opposition

 Any person can file for opposition to the mark during a 2-month period, calculated from the day following that of the publication.

Issue of Registration Certificate

Where no opposition is filed, registration shall be ordered in a reasoned decision, and the corresponding certificate of registration will be issued to the person concerned without prejudice to the rights of third parties.

The certificate of registration shall state the following:

• Name or business style, address and other particulars concerning the owner of the mark;
• Number and date of the decision ordering registration;
• Date and term of the registration;
• .Data concerning the entry in the register;
• Name or reproduction of the mark;
• Class number and particulars of the goods or services covered by the mark or limitation thereof, as the case may be
• Date of issue of the certificate of registration

Priority

 The applicant can claim priority only upon the fulfilment of the below-mentioned criteria.  

• The applicant's home country is a member of the Paris Convention
• The home application was filed six months earlier than the application filing date in Panama

Term of Protection and Renewal

Registration of a mark shall have a term of 10 years calculated from the filing date of the application and may be renewed indefinitely for equal periods only if the appropriate request is filed by the prescribed time limit, and administrative charges are paid.

The request for the Renewal of the registration of a mark shall be made within a period running from 1 year before to six months after the expiration date of the registration.

Upon the expiration of the renewal period without being requested, the registration shall lapse as a right. Renewal of the registration during the six months following expiration shall be requiring payment of the prescribed surcharge. The registration shall remain in full force during the latter period.

The renewal request may not mean the introduction of changes to the mark or extension of the list of goods or services for trademark registration; nevertheless, the owner may limit the said list. For the introduction of changes or the addition of goods or services, a new application shall be filed.

Renewal of the registration of a mark shall not give rise to publication or to any possibility of opposition and shall come into effect on the expiration date of the previous registration.

Where the request is found to be in order, renewal shall be ordered, and the person concerned shall be issued an authenticated copy of the decision ordering renewal.