PANAMA Law and Practice Contributed by: Rafael Rivera, Javier José Vallarino, Juan Vallarino, Karen Y. Tejeira and Carolina Lino, BDO Legal Panama
Application Process Trade mark application is handled at the Directorate of Intellectual Property (DIGERPI). Since Panama is a member of the Trademark Law Treaty, the process does not require major formalities, for example a soft copy without any legalisation of the power of attorney is sufficient for the application. Availability searches are not mandatory, but are highly recommended. After submitting application, it usually, takes between nine to 12 months to obtain a trade mark in Panama. The application will first undergo an examination of the form and subject matter requirements, during which the examiner can issue a request to amend the application or a rejection if there is a lack of subject matter or if the trade mark incurs one of the causes that impedes protection. In the case of a rejection, the applicant can request a reconsideration before the same examiner or appeal to the decision to the Minister of Commerce and Industry. If no rejection or request to amend is filed, the appli - cation will be published for two months, which com - mences the opposition procedure. After publication, any third party that considers their right, whether reg - istered or not, is affected by the application, has the right to file an opposition. Once an opposition is filed, this procedure will be resolved in the Judicial branch in the Commerce and Competition Courts. Opposition proceedings may take a minimum of one year to be resolved. If there is no opposition within the opposition term, the trade mark will be granted for a period of ten years, renewable for the same period. Renewal must be done before the expiration date, if not a grace period of six months is granted. Failure to comply with this period will result in the expiration of the trade mark. It is important to note that applicants might apply for a trade mark for a period of five years instead of ten years. Special Registrations Even though the trade mark registration is given by the PTO, it is important to also register the trade mark in key zones and authorities to proactively tackle coun -
PCT member state will apply. There is no extension to the deadline for entering the national phase in Pan - ama. Protection Term and Supplementary Protection Patents are granted for 20 years. This term is not extendible, unless the DIGERPI has incurred an imput - able delay in the application process and the applicant files a request for supplementary protection within the six months of obtaining the patent. If the application procedure lasts more than five years from the filling date or three years from the date of the request for a substantive examination, this will be considered an imputable delay to the PTO. Supple - mentary protection will depend on the specific case and delay and, in any case, will not be granted for more than seven years and six months. Remedies Patents grant the right to the rightsholder to prevent third parties from: • manufacturing the product; • promoting, offering for sale, using, importing or storing the product for any of these purposes, including when patented procedures are used to obtain a product; and • use the patented process. Panamanian law establishes civil and criminal rem - edies in the case of patent infringement. The civil procedure for patent infringement is handled under a special procedure established in the Industrial Prop - erty Law. The Criminal Code establishes a penalty of four to six years for patent infringement. While cease and desist letters are not binding or recognised by law, they are commonly used in practice and are accept - able. 7.2 Trade Marks Industrial property law has a wide scope when clas - sifying distinctive signs that might be protected by trade marks such as words, images, 3D forms, col - ours, sounds, colours or flavours, indication of origin and geographical indications.
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