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And Its Effects on Foreign Trademarks
INTRODUCTION.
The Legislature of the Republic of Panama has approved a new legislation on industrial property by means of Law No. 35 of May 10, 1996, which will become into effect on November, 1996 thus replacing the obsolete legal provisions on trademarks actually in force which have been in existence for more than sixty years.
This new legislation introduces modem concepts recommended by the World Intellectual Property Organization (WIPO), consistent with the policies of the World Trade Organization (WTO), thus bringing Panama into line with international developments on industrial property, which shall reduce the infringement of foreign trademark rights in Panama.
The former legislation on industrial property was based on a territorial concept for the protection of trademarks, whereby the individual or corporation who had first used the trademark in commerce in Panama had the right to apply for the registration of the trademark, regardless of whether that trademark had been previously registered or used abroad. Consequently, the opposition to the use of a trademark had to be based on the previous registration of the trademark in Panama by the claimant. These provisions refrained foreign trademark owners who had neither used nor registered their trademarks in Panama from seeking protection to their trademark rights against piracy [unless they were incorporated in the United States or other member states of the General Inter-American Convention for Trade Mark and Commercial Protection].
Neither did our legislation contemplate the concept of "well known" or "famous" trademarks so they had no protection against their registrations by a third party .
After giving a brief overview of the deficiencies of the former legislation on industrial property which were consequence of the infringement of foreign trademarks, following we set forth a succinct description of the most relevant changes introduced by this new legislation that allow a better protection to foreign trademarks.
Consistent with these changes, the Republic of Panama has ratified the Paris Convention.
INNOVATIONS OF THE NEW LAW
The new law eliminates the distinction between "national" and "foreign" trademarks and recognizes and accepts the use of a trademark abroad to claim priority for registration purposes in Panama. According article 98 of the new Law, the right to the registration of a trademark is earned by means of the use of the trademark, and the right to the exclusive use of a trademark is earned by its registration. On the other hand, Article 101 defines "use of a trademark" as the production, manufacture or processing of articles, goods merchandise or the rendering of a service distinguished with a brand together with their commercialization in local or foreign markets. Consistent with these new concepts, article 97 of the law states that the preference to the registration of a trademark will be recognized to the individual or company who has first used the trademark in commerce. In case that the trademark has not been used, the preference will be given to the individual or company who has first applied for the registration of the trademark in Panama or claims priority in the use of the trademark.
Under the former legislation, oppositions or cancellations were allowed against the application or registration of a trademark that covered products or services of similar nature or class. Now, oppositions and cancellations can be filed against trademarks that cover related or similar goods and services, even though they do not belong to the same class or nature provided it can be proved that such relation or similarity between the nature of the products can produce confusion among consumers.
With these significant changes the territorial concept of the registration of trademarks, which allowed the infringement of foreign trademark rights, is no longer in effect.
Famous, Renowned and Notorious Trademarks.
Also, the concepts of "famous" or "renowned" and "notorious" trademarks are introduced and protection thereto granted. Article 95 of the new law defines "famous", or "renowned" trademarks as those that by their intensive use in the market and in advertising or publicity have been widely spread without loosing their distinctive strength and are well known by consumers in general, thus permitting the opposition or cancellation of a trademark similar to a "famous" or "well known" trademark even though it is not used in Panama. According to said article 95, "notorious" trademarks are those that have the same characteristics set forth above among the consumers of goods of a particular nature. Consistent with these new concepts, article 98 of the law states that the owner of a famous or renowned trademark may oppose its unauthorized used or registration by another individual or corporation, as well as to file for the cancellation of the registration i n case the trademark has been registered. To oppose the registration or demand the cancellation of a trademark similar to a famous, renowned or notorious trademark is not required that the trademark covers goods or services explicitly similar to the goods or services covered by the famous, renowned or notorious trademark. Under the new provisions, opposition or cancellation can be filed against a trademark similar to a famous, renowned or notorious trademark regardless that the goods or services are of different nature or class.
Exclusions for Registration As Trademarks
The new law has broadened the scope of those logos or names that can not be registered as trademarks in order to expand the protection of foreign trademarks against piracy. According to article 91 of Law No. 35, the following cannot be registered as trademarks, among others:
1. Trademarks identical, similar or alike to others known and used, registered or in the process of registration by other individual or company to distinguish the same products or services or those of the same class which may produce confusion among consumers.
2. Trademarks identical or similar to famous, renowned or notorious trademarks to cover products or services of any nature.
3. Trademarks that are a translation into Spanish of words used, registered or in the process of registration as trademark abroad to cover products or services of any nature.
4. Trademarks that represent a total or partial reproduction, imitation, translation into Spanish or transcription of a commercial or corporate name of an individual or company known in Panama or abroad and that may produce confusion among consumers with respect thereto.
5. Trademarks that consist of the titles of a book, play, music composition or scientific work, and names of fictional character without the consent of his author.
Jurisdiction and Penalties
Under the former legislation, jurisdiction on cases of industrial property was of administrative nature. With the new law, jurisdiction has been removed from the Ministry of Commerce and Industry and given to special courts of commercial law under the Judiciary.
Another major change has been the introduction of new cases of infringement, the granting of special powers to custom authorities to seize counterfeit goods and the increase of sanctions for a better protection of foreign trademarks.
Under the new law, custom authorities and administrative authorities from the Colon Free Zone or any Export Processing Zone are empowered by law to retain, inspect and even seize goods without the need of a claim or process in case they suspect that those goods are counterfeited
In addition to the collection of the corresponding damages, fines ranging between U$10,000.00 to U$200,000.00 will be applied. Also, companies will be refrained from doing business fora period of three months. Additionally, when the infringer is a company located at the Colon Free Zone or an Export Processing Zone, the fine will be equivalent to 25% of its monthly sales but in no case it will be less than U$75,000.00
REQUIREMENT FOR THE REGISTRATION OF FOREIGN TRADEMARKS.
In order to apply for the registration of a foreign trademark in Panama, the former law required a certified copy of the registration of the trademark from its country of origin to certify and confirm the previous registration and good standing of the trademark abroad. Once the trademark had been registered, this document had to be filed in Panama every time the registration of origin was renewed in order to keep in force the Panamanian registration. This requirement has been eliminated to simplify the registration procedure. Under the new law, the following are the requirements for the registration of a foreign trademark:
1. Power of attorney downloadable from this site;*
2. In case of companies, a good standing certificate or an affidavit issued by a Notary Public certifying the name and existence of the company, the name of the Legal Representative who grants the power of attorney on behalf of the company and a declaration stating that such individual has authority to execute the power of attorney;*
3. Sworn declaration regarding the use of the trademark;*
4. Six labels of the trademark;
5. Certified copy of application or registration of origin, when claiming priority use of the trademark*
6. Payment of the corresponding government registration and legal fees.
* (These documents must be sent to us authenticated by Apostille in the country of origin or Panamanian Consul. If in English, they must be translated into Spanish).
The government fees for the registration of a trademark and its renewal for a period of 10 years have been increased to US$100.00 respectively.
CONCLUSION
This new law on industrial property covers many more aspects and subjects than those we have mentioned. However, these are the most relevant considerations that we wanted to highlight because they evidence the extent and nature of these changes that have been introduced in our legislation as a commitment on part of the government to international commerce.
by: JUAN PABLO FABREGA
SPECIAL REGISTRATION AT THE PANAMA CUSTOMS
Like in the U.S., the Customs at Panama has its own special brand register. Applicants must provide the Panama trademark or literary work registration, a sample of the protected item, and a list of authorized distributors in Panama. If a registration does not exist, any reasonable and sufficient evidence may be submitted. Licensees can also be registered by providing their license contract and a sample of the protected item.
This registration is separate from that of the Ministry of Commerce and makes more efficient the control by Panama Customs of merchandise using the trademarks in register without authorization from the registered owners.
SPECIAL REGISTRATION AT THE COLON FREE ZONE
The Colon Free Zone is a special customs area separate from the rest of the country. The trade and transshipment to the rest of Latin America of merchandise carrying trademarks without authorization has been a problem brought to the attention of trade authorities in the U.S. and Europe.
The Free Zone has also a special register of trademark and copyright owners, samples and licensees. With the information in the register, the authorities can control and even seize merchandise in the Zone and also at Export Processing Zones (maquiladoras).
PATENTS AND INDUSTRIAL/UTILITY MODELS
Patents are protected in Panama under Paris Convention and TRIPS agreements, for a period of 20 years. Requirements for their registration are:
1. Power of attorney downloadable from this site;*
2. In the case of companies, a good standing certificate or an affidavit issued by a Notary Public certifying the name and existence of the company, the name of the Legal Representative who grants the power of attorney on behalf of the company and a declaration stating that such individual has authority to execute the power of attorney;*
3. Deed of assignment signed by inventor/assignor and assignee (if applicable);*
4. Drawings, description, summary and claims;
5. Certified copy of application or registration of origin, when claiming priority use of the patent*
6. Payment of the corresponding government registration and legal fees.
* (These documents must be sent to us authenticated by Apostille in the country of origin or Panamanian Consul. If in English, they must be translated into Spanish).
HEALTH REGISTRATIONS
Health registrations are required for importation into Panama of medicines, food products, cosmetics and cleaners. Medicine registrations are valid for 5 years, all others for 10 years. These documents are generally required for registration:
1. Power of attorney downloadable from this site;*
2. Certificate from government in country of manufacturing, stating the concentration or format of that product and that it is freely sold in that country to its citizens;*
3. Listing from government in country of manufacturing, stating complete cualicuantitative formula and ingredients in IUPAC format;*
4. Method of manufacturing, analysis method, toxicity studies, material of package in Spanish;
5. At least 4 samples;
6. 6 Labels with Spanish-language warnings (if applicable)
7. Payment of the corresponding government registration, analysis and legal fees.
* (These documents must be sent to us authenticated by Apostille in the country of origin or Panamanian Consul. If in English, they must be translated into Spanish).