Intellectual property in Panama

Estudio Benedetti

A benchmark in Panama in intellectual property matters‘, specialist firm Estudio Benedetti handles the IP portfolios of household-name multinationals, including companies from the pharmaceuticals, retail, entertainment and luxury goods sectors. Trade mark, patent, utility model and design filings, and Colón Free Zone trade mark issues are among the practice’s key areas of expertise; the group is also active in opposition, cancellation and annulment actions. The sizeable team is led by Ramón Benedetti Velázquez, who oversees the IP prosecution practice; Audrey Williams, who excels in anti-counterfeiting litigation and is ‘very skilled in negotiating trade mark cases‘; IP litigation specialist Diana Leandro; and Ramón Benedetti Alemán, who handles IP renewals and foreign filings. Other noteworthy practitioners include patent agent Jeane Johnson and associate Graziella Benedetti, whose ‘extensive experience in regulatory issues allows her to provide good solutions to all client issues‘. Fernando Reyes, a name to note for infringement cases, and Julissa Farah also stand out at the associate level.

Practice head(s):

Ramón Benedetti Velázquez; Audrey Williams; Diane Leandro; Ramón Benedetti Alemán

Testimonials

‘Reliable advice, cost efficiency, a high level of client care, quick responses and billing that is always on time. Overall, this office has everything a client needs. The level of responsibility and efficiency is incomparable.’

‘The team stands out for the reliability and expertise of the lawyers. Julissa Farah provides top-notch services, in-depth analysis and gets straight to the point.’

‘The firm is known for the experience it has gained over many years of practice, and its specialisms in different areas of IP law such as litigation, infringements, patents and anti-counterfeiting, among others. The knowledge and experience of the senior lawyers together with the capacity of the young lawyers who contribute new ideas and technology has made it a very solid firm.’

‘What differentiates them from other firms in Panama is the personal qualities of the firm’s lawyers – their friendliness, accessibility and familiarity with clients make working with the people in this team very comfortable.’

‘Estudio Benedetti is one of the main proponents of intellectual property law in Panama. The firm is a leader in the market and has a highly competitive team and a platform that allows it to cover all matters. We consider that the firm is a benchmark in Panama in intellectual property matters.’

‘Graziella Benedetti’s extensive experience in regulatory issues allows her to provide good solutions to all client issues. Audrey Williams is excellent in litigation and very skilled in negotiating trade mark cases. Diana Leandro is excellent in handling trade mark cases. Ramón Benedetti is a great manager of the team and of the firm’s strategy.’

Key clients

Sony Interactive Entertainment

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)

F. Hoffmann-La Roche

Univision

Rexair

Netflix

Arabela

Riot Games

Fitbit

Lo.Li.Pharma

Karo Pharma

IQVIA

American Airlines

Work highlights

  • Acted for Mexican company Grupo Seguridad Integral after an opposition was filed against its registration of the trade mark “GSI & Design” by Panamanian company Grupo de Seguridad Integral, as well as in filing a nullity action against the trade mark “G S I Grupo de Seguridad Integral SA & Design” owned by the Panamanian company.
  • Advising F Hoffmann-La Roche on the consolidation of its IP portfolio in Panama.
  • Advised Vida Produce Company on the prosecution of its new brands and image in Latin America, the US, the UK and Europe, in addition to overseeing the company’s IP portfolio worldwide.

Alfaro, Ferrer & Ramírez

The IP, health and compliance department at Alfaro, Ferrer & Ramírez is renowned for its ‘thorough and specific knowledge‘ of contentious and non-contentious IP matters. The team is particularly active in litigation, including opposition, cancellation and nullity actions, and anti-counterfeiting cases. It also handles the global trade mark and regulatory portfolios of clients operating in a variety of industries, including manufacturing, financial services, food and beverages, and life sciences. At the head of the practice, Marissa Lasso de la Vega focuses on IP enforcement litigation and 'is always on top of cases', while the 'knowledgeable' Monique Ferrer primarily handles the prosecution of IP rights and regulatory issues concerning the advertising and labelling of cosmetic, agrochemical and pharmaceutical products.

Practice head(s):

Marissa Lasso de la Vega; Monique Ferrer

Testimonials

‘The AFRA team provides a very good level of service. They have very good response times and a broad practice covering all the different queries we have brought to them. In addition, they share our firm’s values in terms of diversity, commitment and efficiency.’

‘Marissa Lasso de la Vega is a lawyer who is always on top of cases and looking for an effective solution to different problems. When looking for a solution, she always proposes the option that really fits the needs of that specific case.’

‘It is a team that is permanently monitoring issues and provides quick and timely responses. They are very organised and take care to keep clients informed at all times.’

‘Monique Ferrer is knowledgeable about all the matters she is in charge of, and her service is personalised and very efficient.’

‘Thorough and specific knowledge of IP issues.’

‘Marissa Lasso de la Vega is extremely dedicated, with extensive knowledge of the subject.’

Key clients

PepsiCo

Televisa

Conair Corporation

Alicorp

Varela Hermanos/Nacional Quimica

Target Brands

BASF

Puma Energy

Koninklijke Philips Electronics

Bugfables

Haribo/Rigo Trading

Work highlights

  • Acted for Varela Hermanos  in an international arbitration seeking the transfer of a website promoting the product to the client.
  • Advised Haribo on a cancellation and nullity process initiated by Pascual due to a supposed similarity between its Panda Bear brand and the client’s Golden Bear brand and design.
  • Advising Televisa in an opposition process filed against it by Disney in Panama seeking to determine which of the two television companies is best entitled to the use of the “Star” or “Stars” brand.

Icaza, González-Ruiz & Alemán

Icaza, González-Ruiz & Alemán is active in trade mark, patent and copyright matters, handling the registration of IP rights nationally and internationally, as well as IP-related litigation. The practice predominantly acts for well-known multinationals from the beauty, pharmaceutical, automotive, luxury goods, food and beverages, and entertainment sectors. Practice head Gabriela Tejada de Britton has longstanding experience in trade mark and patent prosecution, and leads the IP team that provides 'deep expertise and pragmatic advice'. She 'is backed by an excellent team', which includes recently promoted partner Moisés Rivera, whose specialisms encompass trade marks, brand protection and anti-counterfeiting litigation, and associate Fernando González-Ruiz, who handles infringement actions, particularly in the e-commerce sector.

Practice head(s):

Gabriela Tejada de Britton

Testimonials

‘A solid trade mark practice. Nuanced and practical business advice.’

‘Gabriela Tejada de Britton provides clients with deep expertise and pragmatic advice at a reasonable cost. She is backed by an excellent team that keeps clients advised of developments in a timely manner.’

Key clients

NBA Properties

Axkati Legal

AB Inbev Group

Bicicletas Rali – Sky Business Panama

Manchester United Football Club

Baker McKenzie

Inmobiliaria Don Antonio

Locke Lord

NBC Universal

Liad Whatstein & Co

Work highlights

  • Assisted Everest Reinsurance Company with filing an opposition to the trade mark applications for “Everest” and “Corporacion Everest”, filed by the company Corporacion Everest, on the grounds that prior registration of the trade mark in the US, Colombia, Mexico and Guatemala gave the client greater rights to the trade mark in Panama.
  • Acting for Cervecería Nacional and Distribuidora Comercial Group in an opposition action against an application for the trade mark “Dasani Mini” by the Coca-Cola Company, on the grounds that the applicant had not filed a disclaimer for the term “Mini”.
  • Represented Rolex in an investigation into two social media accounts selling counterfeit Rolex products and filed a criminal complaint on the client’s behalf.

Arias, Fábrega & Fábrega

The intellectual property practice at Arias, Fábrega & Fábrega has a strong track record in trade mark registrations, both in Panama and throughout Latin America. Copyright issues, IP infringement actions and IP licensing are other areas of activity for the team, which acts for a broad client base, including major multinationals from the food and beverages, pharmaceuticals, manufacturing, telecoms and automotive sectors. The department is managed by Rosa Restrepo. Associate Melissa del Busto is also noted for her experience in trade mark, patent and copyright portfolios, licensing issues, and IP-related litigation.

Cedeño & Méndez

The ‘spectacular‘ IP practice at Cedeño & Méndez handles a high volume of trade mark registrations, both in Panama and internationally, in addition to copyright issues (including the registration of software) and the review of IP contracts. On the contentious side, the team represents clients in cancellation, nullity and infringement proceedings. Singled out for its 'knowledge, proactive approach, dynamism and experience in all areas of IP', the firm is regularly sought by clients from a multitude of sectors, including food and beverages, pharmaceuticals, technology, logistics and fashion. Practice head Roberto Emilio Gómez Cedeño is highlighted for his ‘extensive experience‘ in portfolio management and IP-related litigation, as well as his comprehensive knowledge of patent law.

Practice head(s):

Roberto Emilio Gómez Cedeño

Testimonials

‘The team is spectacular – always accessible to work with and to provide solutions and with a good technological system to follow up.’

‘Roberto Gómez Cedeño is a definite leader, with great ability and knowledge of the subject. It is a pleasure to work with him.’

‘Cedeño & Méndez has 30 years of experience, which gives us security. They have a professional team that stands out for its dynamism and quality of client care. The experience of the lawyers allows them to be practical when providing solutions, bringing us success in the cases we have with them.’

‘Roberto Cedeño and the team stand out for their knowledge, proactive approach, dynamism and experience in all areas of IP, which gives great value to the advice they offer us.’

‘The partners, associates and administrative staff of Cedeño & Méndez provide a service of the best quality. They are extremely quick and clear in their responses. They have a 24/7 system where clients can always access their files. They have a great team, efficient technology and are extremely service oriented.’

‘Roberto Gómez Cedeño provides immediate attention, impeccable advice and unmatched professionalism.’

‘It is important for a partner firm in Panama to have a good understanding of the law in other jurisdictions and an excellent relationship with the Patent Office. Both of these characteristics are possessed by the C&M team and distinguish it from most of its competitors. Additionally, it is a team with excellent client service – they respond thoroughly and punctually, often anticipating any risks and opportunities.’

‘Our main point of contact is Roberto Gómez Cedeño, a lawyer with extensive experience in intellectual property matters and with a good grasp of the area of patent law. We love working with him for his creativity, energy and commitment to the client and the project.’

Key clients

LatinAlliance

Waterwipes/Irish Breeze

Biologische Heilmittel Heel

Central Veterinaria

Productos Farmaceuticos (Chinoin)

Honigman, Miller, Schwartz & Cohn

Mansur, Birman, Guakil y Wolff

Olarte Moure

Albagli Zaliasnik

Ideas Trademark

Empresa Panameña De Alimentos

Central Law

Herrero & Asociados

Gruenbaum, Possinhas & Teixeira

SM Jaleel

Irex De Costa Rica

LR Ducruet/Unity

Work highlights

  • Advising Beijing Xiamoi Mobile Software on the management of its designs portfolio.
  • Advising Waterwipes on the management of its trade mark portfolio in Latin America.
  • Acting for Productos Alimenticios (Papsa), a subsidiary of Empresa Panameña de Alimentos and the owner of the “Osito” brand, in filing an opposition to the registration of the trade mark “Abrazo de Osito” by Grupo Bimbo.

CENTRAL LAW

At regional firm Central Law, the IP, health registrations and advertisement department advises both local and international clients from the retail, education, telecoms, pharmaceuticals and food products sectors in a host of IP mandates. The team handles trade mark and health registrations for regional clients, acting alongside the firm’s other offices in Central America, and is also well versed in opposition and infringement actions. Regional IP director Yolianna Arosemena Benedetti is active in the management of IP and health registration portfolios, with a particular focus on the food industry. Benedetti jointly heads up the practice with associate Tania Chen.

E-Proint

E-Proint handles the local trade mark portfolios of multinationals from a variety of sectors, including pharmaceutical, personal care, food and beverages, entertainment and technology, and also assists with the co-ordination of clients’ global portfolios. In addition, the team has experience in IP licensing issues, patent filings, nullity and cancellation actions. The experienced Alexander García leads the practice, often working alongside the firm’s network of offices in Central America and the Caribbean.

Fabrega Molino

Praised for its ‘high level of experience’ and the ‘high quality of its services’, the ‘fantastic’ IP team at Fabrega Molino is well positioned to assist with the registration and protection of trade marks throughout Latin America. The practice showcases additional strength in patents, industrial models, copyright, domain names, and licensing and franchising issues. Advising on assignments of IP assets is another area of activity for the group, which routinely acts for leading companies from the healthcare and life sciences, telecoms, consumer products, food and technology sectors. ‘Exceptional‘ practice head Farah Molino specialises in copyright issues and advertising matters. She ‘leads the team with the greatest ability and is always on top of all the issues’.

Practice head(s):

Farah Molino

Testimonials

‘It is a fantastic team. Farah Molino is very detailed oriented and takes care of her clients, in addition to doing the perfect job. They adapt perfectly to the needs of the client.’

‘An excellent firm with which we prefer to work thanks to its agile handling of issues, high level of experience, the quality of its services, and the balance between cost and service.’

‘High level of knowledge and preparation. Excellent client service. A very well-coordinated and well-led team. Farah Molino is our main contact – she manages and leads the team with the greatest ability and is always on top of all the issues.’

‘It is always a pleasure to work with Fabrega Molino.’

‘Farah Molino is an exceptional partner. Her attention to detail and strategic thinking is excellent.’

‘Fabrega Molino’s lawyers are experts who deal with all the matters entrusted to them with great detail and dedication, constantly monitoring their cases and updating their clients. We would like to mention Farah Molino – she is an outstanding partner and a professional of the highest standard, who has great experience and is always prepared to use all the necessary resources until the client’s objectives are achieved.’

‘We always receive efficient, timely and prompt support in each case that we entrust to them. The professionalism and extensive knowledge of the subject are excellent.’

‘The cost/service ratio is unbeatable. The level of confidence that the knowledge, professionalism and agility of Farah Molino’s team gives us is highly valued and appreciated.’

Morgan & Morgan

Morgan & Morgan stands out for its track record of advising on the IP aspects of M&A transactions, and distribution and licensing agreements. The team is adept at handling trade mark registrations in Panama and internationally, offering advice to a diverse client portfolio comprised of leading names from the luxury fashion, consumer products, banking, automotive, and food and beverage sectors. Francisco Arias manages the practice, where senior associate Allen Candanedo is a name to note for IP contentious matters, and associate Maria Eugenia Brenes assists with IP portfolio management and health product regulations.

Practice head(s):

Francisco Arias

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

Galores Group

Work highlights

  • Advising Galores Group on the intellectual property issues relating to its sale to Emergent Cold Latin America.
  • Advising EREA Management Consulting on its international IP and brand protection strategy, including supervising the international renewal process of the company mark.
  • Advising Agencias Escoffery on its national and international IP and brand protection strategy, including supervising the national registration of new trade marks.