Intellectual property in Panama

Estudio Benedetti

An 'iconic firm in Panama', IP specialist Estudio Benedetti covers a wide range of matters in this field, advising on a huge volume of trade mark and patent prosecutions, opposition, cancellation and anti-piracy actions, trade mark licensing and international franchising agreements. The team manages the IP portfolios of leading multinational clients from a diverse range of sectors, including pharmaceuticals, clothing, entertainment and luxury goods, and also assists a number of local clients, particularly restaurants, with creating trade marks. The sizeable team is led by Ramón Benedetti Velázquez, who heads the IP prosecution practice, with a focus on advising international clients; Audrey Williams, who leads on anti-counterfeiting matters; IP-related litigation specialist Diana Leandro; and Ramón Benedetti Alemán, who focuses on IP renewals and international filings. They receive strong support from patent agent Jeane Johnson, associate Fernando Reyes, who is experienced in complex infringement cases, and associate Graziella Benedetti, who focuses on the regulatory side of the practice.

Practice head(s):

Ramón Benedetti Velasquez; Audrey Williams; Diana Leandro; Ramón Benedetti Aleman

Testimonials

‘The team we work with is very specialised, cohesive and well coordinated by Graziella Benedetti. The response times are optimal and they pay in-depth attention to detail.’

‘What has made a notable difference from other law firms is mainly the work ethic, sense of responsibility, and proven knowledge and experience of the firm in the legal matters in which they represent us, as well as the excellent communication they maintain with the government authorities of Panama.’

‘The entire Estudio Benedetti team has the perfect legal qualifications to be able to represent us, particularly Graziella Benedetti, who works in a very ethical, responsible and respectful manner and, above all, maintains a direct line of communication with us. What sets them apart from other firms is the direct, timely and effective communication.’

‘The Estudio Benedetti team is characterised by its knowledge of the subject matter and serious approach, as well as by the speed of its responses and follow-up on cases. The client service is highly personalised, which provides clients with the assurance that our cases are important.’

‘In our opinion, Audrey Williams stands out for her knowledge and professionalism, as well as being accessible at all times to meet clients’ requirements. In addition, her kindness and her people skills add personal qualities to the professional ones.’

‘The firm sets itself apart through its timely follow-up, experience in all the legal and practical aspects of intellectual property, and complete mastery of the legislation in Panama. The service provided is always very prompt and professional.’

‘It is a firm with a proven track record and with successful case management statistics. Its main strengths are the excellent, personalised client service and the quality of its legal advice in all matters related to IP. Ramón Benedetti Alemán, Audrey Williams and Diana Leandro stand out.’

‘Estudio Benedetti is an iconic firm in Panama for its knowledge in the IP field, its outstanding professionalism and unmatched client service. Graziella Benedetti provides excellent assistance and is always aware of everything going on with the case. She handles all regulatory issues with great ease and professionalism. Audrey Williams is an excellent attorney, both in litigation and for day-to-day issues. She provides quick responses and handling of all the important issues that clients need.’

Key clients

Warner Bros.

Guccio Gucci

Universidad Tecnológica de Panamá

CPA Global Company

Sanrio Corporation

Avon Products

Hanesbrands

Beiersdorf

Telefonica

Editorial Televisa

The Scotch Whisky Association

S. Tous

Asociación de Cafeses Especiales de Panamá (Speciality Coffee Association of Panama)

Skullhead

Breitling

Rotary International

Mylan

Specialized Bicycle Components

Rivian IP Holdings

Stripe

Work highlights

  • Assisted a major company in the food and beverage sector with the IP matters relating to the sale of the large portfolio of a joint venture in Panama.
  • Representing a prominent pharmaceutical company in a complex criminal action for trade mark counterfeiting and public health violations.
  • Assisted a client with the seizure of in-transit merchandise that infringed a well-known cartoon character, and negotiated a settlement with monetary compensation for the client and destruction of the products.

Alfaro, Ferrer & Ramírez

The 'extremely proactive and accessible' team at Alfaro, Ferrer & Ramírez advises domestic and international clients from a wide range of sectors, including the chemical, consumer product, food and drink, retail and pharmaceutical industries, on IP issues in Panama and throughout Latin America, the Caribbean, the US and Europe. Areas of strength include trade mark and patent registrations, copyright infringement cases, utility and design applications, and IP enforcement actions. At the head of the team, the 'highly available and always responsive' Marissa Lasso de la Vega and Monique Ferrer are experienced in both contentious and non-contentious IP matters. Ferrer also leads the firm's regulatory department, advising on advertising and labelling compliance for pharmaceutical, cosmetics and agrochemical products, among others.

Practice head(s):

Marissa Lasso de la Vega; Monique Ferrer

Testimonials

‘They are highly up-to-date with new market trends and new topics, which allows them to give the correct advice to clients and find creative solutions that minimise risks. They are a team that is almost always one step ahead of the rest of the firms.’

‘They are extremely proactive and accessible. The attitude of Marissa Lasso de la Vega and Monique Ferrer as directors of the practice permeates the entire team as they are highly available and are always responsive to the client’s needs.’

Key clients

PepsiCo

Televisa

Romar Trading

Varela Hermanos

BASF

Puma Energy

Edwards Lifesciences

Altieri Coffee

Adidas

Nacional Quimica

Work highlights

  • Represented the Republic of Panama in a trade mark litigation and a further arbitration process before the ICC.
  • Acted for Laboratorios Gerco in a trade mark cancellation action before the Panamanian courts.
  • Acted for Inter in a cancellation and nullity action against the registration of a trade mark.

Icaza, González-Ruiz & Alemán

Advising multinationals, particularly from the luxury goods, healthcare, and food and beverages sectors, on trade mark registrations and renewals is a key area of work for Icaza, González-Ruiz & Alemán‘s ‘receptive, clear and professional‘ team. The firm has also developed a practice focused on assisting local entrepreneurs and start-up businesses with registering trade marks, and has a growing practice dedicated to assisting IP clients with data protection and privacy issues. On the contentious side, the firm has significant expertise in IP litigation, covering opposition, nullity and cancellation actions, unfair competition cases and anti-counterfeiting proceedings. Practice head Gabriela Tejada de Britton has vast experience in the management of trade mark and patent portfolios. Other key contacts include Mariela de la Guardia, and associates Fernando González-Ruiz, who specialises in anti-counterfeiting actions in particular, Graciela Rodriguez and Moisés Rivera. Since publication, Rivera has been raised to the partnership - effective as of March 2022.

Practice head(s):

Gabriela Tejada de Britton

Testimonials

‘The team stands out for its clarity and precision in explaining legal concepts, as well as the transparency and diligence of its work.’

‘All of the lawyers without exception are very receptive, clear and professional.’

Key clients

L’Oréal

Rolex

Bulgari

Car Freshner Corporation

NBCUniversal

NBA Properties

The Sherwin-Williams Company

Sky International

Cervecería Nacional – AB InBev

Work highlights

  • Acted for Victorinox in opposition proceedings filed against the defendant’s trade mark registration.
  • Acted for Sky International in a nullity action over the trade mark “Skyworth” filed by Skyworth Group.
  • Acted for Swatch in opposition proceedings against the filing of the trade mark “IWatch” by Brightflash USA and Apple.

Arias, Fábrega & Fábrega

Rosa Restrepo leads the team at Arias, Fábrega & Fábrega, which advises on the registration of trade marks and other IP rights in Panama, the rest of Latin America and around the world. The firm also assist with copyright matters, IP infringement and licensing issues. Associate Melissa del Busto is another key contact.

Practice head(s):

Rosa Restrepo

Cedeño & Méndez

A Panamanian firm with offices throughout Central America and Colombia, the 'excellent' Cedeño & Méndez has a clear specialism in IP, handling a high volume of trade mark registrations in particular. In addition, the team assists with renewals, copyright issues (including in relation to the registration of software), opposition, cancellation, nullity and infringement proceedings, and the review of IP contracts for a diverse roster of clients, particularly in the food and beverages, pharmaceuticals and fashion sectors. The firm has also developed specialised brand management software to assist clients with renewing trade marks and identifying infringing marks. The 'always available' Roberto Emilio Gómez Cedeño leads the practice.

Practice head(s):

Roberto Gómez Cedeño

Testimonials

‘They work very well – they are quick, organised and provide very clear answers. We are very satisfied with the service provided by this firm.’

‘Roberto Gómez is always available to answer questions of any kind.’

‘In my opinion, the IP litigation team has excellent prices compared to other quotes we received from other firms when we started operating in Panama.’

‘Roberto Gomez is a person with absolute integrity and I hope to work with him in Panama for many years.’

‘Excellent service and fast communication. They are always willing to assist with research and give their opinion in complex cases. We work with Cedeño & Méndez often and closely on a variety of intellectual property cases. Rather than just being our attorneys in Panama, they are our partners and allies.’

‘An excellent team, dynamic and proactive!’

‘The lawyers are very practical in moving matters forward and have proven experience in achieving successful results.’

Key clients

Productos Farmacéuticos

Articruz

LatinAlliance Law

Waterwipes | Irish Breeze

Biologische Heilmittel Heel

Truckslogic International Holding

Central Veterinaria

Ideas Trademark

Empresa Panameña de Alimentos

Albagli Zaliasnik

Olarte Moure

L.R. Ducruet / Unity

Irex de Costa Rica

Kresalja IP

Work highlights

  • Advising tech company Beijing Xiamoi Mobile Software on the registration of its patents and industrial designs in Panama.
  • Advising La Piedra Films, the producer of the biographical film “Hands of Stone” about Panamanian boxer Roberto Durán, on contractual and IP issues (including trade mark and copyright registrations).
  • Advising Ideas Trademark on the management of its clients’ trade mark and patent portfolios in Panama.

CENTRAL LAW

As a regional firm, Central Law is well placed to advise on the management of clients' IP portfolios throughout Central America, working alongside its other offices in Guatemala, Costa Rica, El Salvador, Nicaragua and Honduras. The 'proactive' team covers a wide range of IP work, including trade mark registrations and oppositions, as well as regulatory issues such as health registrations. Clients include both domestic and international companies in sectors ranging from retail and education to telecoms, pharmaceuticals, and food and beverages. Yolianna Arosemena Benedetti, who is particularly experienced in advising multinationals with operations in Panama on their IP issues, leads the practice with Tania Chen.

Practice head(s):

Yolianna Arosemena Benedetti; Tania Chen

Testimonials

‘Very proactive when responding to questions and reporting back on the steps taken.’

‘They have a personal touch, a lot of experience and a lot of confidence in the solutions they propose.’

‘I have been working with Central Law for over 15 years. During this time, the quality of the firm’s legal services, and its knowledge and training in different areas of law have been of great use to my company.’

‘In my opinion, the team’s main strength is that they are very efficient. I always receive a prompt response and they are extremely organised. I am satisfied with the work done to date, and the firm’s costs are very reasonable and in line with the market. I work directly with Yolianna Arosemena Benedetti, who is very accessible and organised.’

Key clients

Mabe

Kerry Ingredients

Grupo Profarmaco

Ecolab

BT Global

Roche Services Americas

Work highlights

  • Advising Spanish pharmaceutical company Profarmaco on trade mark registrations and health registrations for its products in Central America.
  • Advised Dubai-based Global Tobacco FZCO on the registration of its products in Latin America.
  • Advised AstraZeneca on a cease and desist letter received from GlaxoSmithKline regarding the IP issues involved in the advertising campaign for its blue rescue inhaler.

E-Proint

With offices throughout Central America and the Caribbean, specialist IP firm E-Proint launched its Panama office in 2018 and is highly active in the filing of trade marks and patents in the region. Multinational companies with operations in Panama make up a large proportion of the team's client base, spanning the pharmaceutical, cosmetics, food and drink, fashion and entertainment sectors, among others. However, the team also assists mid-sized local businesses and individuals with IP issues. Practice head Alexander García is particularly experienced in IP litigation, handling opposition and cancellation actions, in addition to assisting with portfolio management.

Practice head(s):

Alexander García

Testimonials

‘They stand out for their warmth, personal touch and clarity when explaining solutions.’

‘They show real interest and motivation. The work of Alexander Garcia stands out.’

‘The firm offers good value for money and personalised client service.’

Fabrega Molino

The ‘reliable and efficient‘ IP team at Fabrega Molino counts companies from the healthcare, consumer products, food and beverages, textiles, telecoms and technology sectors among its clients. It is particularly experienced in IP litigation, acting in opposition, nullity and infringement actions, but also advises on the registration of trade marks, patents and industrial models, copyright and domain names, and assists with licensing and franchising issues. The ‘highly professional and experiencedFarah Molino leads the practice and is active in the management of local and international IP portfolios. Since publication, Molino has been promoted to senior partner - effective as of April 2022.

Practice head(s):

Farah Molino

Testimonials

‘Fabrega Molino have kept their operations going uninterrupted during the pandemic, dealing promptly with all of our requirements as clients and using virtual platforms to maintain contact with us.’

‘Farah Molino is highly professional, experienced in the field of intellectual property law, and honest.’

‘It is a highly specialised team, committed to providing a reliable and efficient service. They maintain the highest standards in terms of compliance with the law, following the best principles and values.’

Jimenez, Molino & Moreno

Jimenez, Molino & Moreno advises on the prosecution of trade marks, patents and copyright in Panama, and also represents clients in contentious IP matters. The experienced Edwin Molino is the key contact.

Practice head(s):

Edwin Molino

Morgan & Morgan

The ‘extremely responsive‘ team at Morgan & Morgan has a strong international client base, advising companies from the luxury goods, food and beverages, and automotive sectors, among others. The team assists with trade mark and patent prosecutions in Panama and other jurisdictions, as well as customs and counterfeiting issues, the IP aspects of M&A transactions and franchise agreements, and IP litigation. Associate Allen Candanedo  is particularly experienced in contentious IP matters, acting in opposition, cancellation and nullity actions, and handling anti-counterfeiting litigation. Fellow associate Maria Eugenia Brenes focuses on the management of clients’ IP portfolios in Panama and health registrations.

Practice head(s):

Francisco Arias

Testimonials

‘They dedicate themselves body and soul to the client.’

‘Allen Candanedo has deep knowledge of the intellectual property area, responds immediately to requests and is always willing to assist his clients. He is effective in solving problems.’

‘The Morgan & Morgan team are extremely responsive and are always alert to the needs of their clients, offering thoughtful and practical advice. It is a pleasure to work with them.’

‘Allen Candanedo is always willing to answer any questions we may have and to consider options, showing flexibility according to the different budgets of each client.’

Key clients

Louis Vuitton Malletier

The Clorox Company

LVMH Group (Celine, Givenchy, Loewe, Marc Jacobs, Kenzo, Emilio Pucci)

Agencias Escoffery

Banistmo

Volkswagen

Grupo Omnilife

Televisora Nacional

Casa Bruja

KraftHeinz

Work highlights

  • Advising Agencias Escoffery on various IP matters.