Estudio Benedetti is renowned as a market leader in IP law, fielding a specialist, four-partner team, which advises on the full spread of IP matters, from filing a high volume of trade mark and patent applications to handling anti-counterfeiting claims and opposition, cancellation and annulment actions. The team assists an impressive roster of household-name international clients from the media, aviation, fashion, cosmetics, telecoms and pharmaceutical sectors with the management of their IP portfolios (in addition to assisting with regulatory matters, including health registrations). The vastly experienced Ramón Benedetti V oversees the trade mark and patent prosecution department; Audrey Williams (who also serves as vice president of the Panamanian Association of Intellectual Property Law) is the go-to figure for anti-counterfeiting litigation; Diana Leandro leads the IP litigation practice; and Ramon Benedetti Alemán focuses on renewals, recordations and foreign filings. The talented pool of associates includes Fernando Reyes, who has expertise in complex infringement cases, and Julissa Farah, who handles renewals and recordations, while the firm also benefits from the experience of patent agent Jeane Johnson.
Intellectual property in Panama
Ramón Benedetti V; Audrey Williams; Diana Leandro; Ramón Benedetti Alemán
Sony Interactive Entertainment
Universidad Tecnológica de Panamá
CPA Global Company
The Scotch Whisky Association
Asociación de Cafeses Especiales de Panamá
F. Hoffmann-La Roche
- Achieved a settlement on behalf of a multinational entertainment company in a long-running criminal case involving counterfeit products.
- Assisted a prominent Latin American cosmetics company with a complex project involving the almost simultaneous clearance and filing of more than 120 trade marks, and the filing of petitions to obtain health registrations for 400 products.
- Obtained a favourable ruling for a global lifestyle brand in a long-running opposition case against the client’s applications to protect figurative and stylised marks.
Praised by clients as a ‘robust, professional team with in-depth and fast responses‘, Alfaro, Ferrer & Ramírez‘ IP department advises an enviable list of multinationals on the protection of their IP rights. The team is well versed in trade mark prosecutions and litigation (including opposition, cancellation and nullity actions), and also has recent experience in copyright-related matters. Advising clients in the cosmetics, food and pharmaceutical industries on health registrations and other regulatory issues is also a core area of activity. The ‘always available‘ Marissa Lasso de la Vega, who is skilled in IP litigation and related consumer protection claims, leads the team with Monique Ferrer, a specialist in prosecutions and the head of the regulatory and compliance department. The team also draws on the input of associates Marycarmen González, who has a focus on the health and life sciences sectors, and Nicole López, who frequently provides support in IP litigation.
Marissa Lasso de la Vega; Monique Ferrer
‘It is our first choice in Panama. A robust, professional team with in-depth and fast responses.’
‘Marissa Lasso, Monique Ferrer, Marycarmen González and Nicole López all stand out.’
‘It seems to me to be a very organised team. The two leaders of the practice area are women, demonstrating diversity and equity in the group. They handle matters in the best way in their area of expertise. The whole team is very professional and efficient.’
‘Monique Ferrer knows our entire team and how to solve our issues, which gives us agility when dealing with matters internally and externally. Her warm attitude and response times stand out.‘
‘A good team. Marissa Lasso de la Vega is always available.‘
Varela Hermanos/Nacional Quimica
Koninklijke Philips Electronics
- Carried out a successful opposition process on behalf of Billboard IP Holding against a trade mark application for the registration of “Billboard” to identify products in class 25 and obtained recognition by the Panamanian courts of the worldwide use of “TM Billboard”.
- Advised companies in the telecoms, health, banking, e-commerce and other sectors on the drafting and adequacy of their policies on data collection and privacy and compliance with new Panamanian regulations.
- Advising on the maintenance and protection of the Panamanian trade mark portfolio of Tommy Hilfiger.
The IP lawyers at Icaza, González-Ruiz & Alemán are highlighted as ‘very skilled trade mark practitioners‘, but also have expertise in patent matters, with a comprehensive practice which covers filings, oppositions and renewals, as well as anti-counterfeiting litigation. The firm enjoys strong connections with international law firms thanks to its membership of alliances such as Multilaw, allowing it to advise multinationals across a broad spread of sectors, including pharmaceuticals, telecoms, luxury goods, sports, and food and beverages, on the management of their IP portfolios. ‘Excellent‘ practice head Gabriela Tejada de Britton, who is the current president of the Panamanian Association of Intellectual Property Law, is renowned for her experience in the full spectrum of trade mark and patent matters. She is supported by up-and-coming partners Moisés Rivera, an expert in IP litigation (particularly opposition actions), and Mariela de la Guardia (who leads the firm’s growing data privacy and protection department), and ‘remarkable‘ associate Fernando González-Ruiz, whose practice has an emphasis on brand protection and anti-counterfeiting litigation.
Gabriela Tejada de Britton
‘It is a great team of very professional lawyers with excellent, high-quality client service.’
‘Fernando González-Ruiz is a remarkable lawyer – he is direct and has great knowledge of the subject matter.’
‘The team assists us with professionalism and efficiency.’
‘Fernando González-Ruiz has supported us in a professional way to serve our clients in Panama, and has always been available to better assist so that clients feel comfortable.’
‘Very skilled trade mark practitioners.‘
‘Gabriela Tejada de Britton is excellent.‘
Bristol Myers Squibb
Unilever IP Holdings
Exxon Mobil Corporation
General Electric Company
Harman International Industries
New Balance Athletics
- Advised Connect Road Assists on the filing and prosecution of a patent application titled “Dispatch Platform for Road, Travel or Home Assistance”, overcoming objections by the Panamanian Patent Office.
- Acted for New Balance Athletics in a nullity and cancellation action filed against the trade mark “IV & Design” in class 25, as its design is similar to the client’s “N” design.
- Acted for Epic Games in an opposition action against the registration of the trade mark “Fortnite” by Marcamoda, and sent a cease and desist letter to the owner of the company to prevent the sale of counterfeit Fortnite merchandise.
Arias, Fábrega & Fábrega houses a wide-ranging IP practice, which is prolific in the registration and renewal of trade marks, as well as handling opposition, cancellation and nullity actions, IP licensing and health registrations. The team is also active in the anti-counterfeiting arena, including coordinating a training programme for Panama’s customs authority. Drawing on its membership of global networks such as Lex Mundi, the firm frequently joins up with law firms worldwide to assist international companies in protecting their IP portfolios in Latin America and further afield. Rosa Restrepo oversees the practice, while associate Melissa Del Busto is skilled in both contentious and non-contentious matters, and brings in-house experience at the Ministry of Health when advising on health registrations.
Société des Produits Nestlé
Uefa Champions League
Church & Dwight
Toyota Motor Corporation
- Advising Fifa on various IP matters relating to the 2022 World Cup, including trade mark infringement and consumer protection issues.
- Assisted Colgate-Palmolive in Central America with the detection and destruction of counterfeit toothpaste products using the client’s trade mark.
- Acting for fashion brand Supreme in an opposition action against the trade mark “Supbro”, which was similar in font and colour to the client’s “Sup” mark.
Cedeño & Méndez
Cedeño & Méndez‘s ‘very well-established‘ IP department plays a prominent role in the registration of trade marks in both Panama and internationally, benefitting from the firm’s presence across Central America as well as its close links with practices throughout Latin America and the Caribbean. The firm’s expertise also extends to advising on patent prosecutions and copyright issues (including in relation to software), and the IP aspects of M&A transactions, commercial contracts and licensing. On the contentious front, it has a strong recent track record in opposition, nullity and cancellation actions. ‘Smart, reliable‘ managing partner and practice head Roberto Gómez Cedeño has an excellent reputation across the full range of IP issues, with a client base that covers the food, healthcare, technology, logistics and fashion sectors.
Roberto Gómez Cedeño
‘It is a very well-established team, directed in a great way by Roberto Gómez. They are very careful in handling and reporting information.’
‘Roberto Gómez is a very solid professional, who shows excellent management of his team and of the matter itself.’
‘We have been using this firm for many years in several countries for all of our trade mark needs. They manage our trade mark portfolio and all of our trade mark conflicts and have always provided an excellent service.’
Biologische Heilmittel Heel
Truckslogic International Holding
Ideas Patents and Trademarks
Productos Farmaceuticos (Chinoin)
Anderson Mori & Tomotsune
Bommidala Enterprises Private
An ‘exceptional‘ team which ‘stands out for its efficiency, excellence, knowledge and track record‘, the IP group at Fabrega Molino handles a healthy mix of advisory work and litigation, with a broad client base spanning the healthcare and life sciences, consumer products, food, textiles and technology sectors. The team advises on trade mark registrations in Panama and throughout Latin America, and also has expertise in patents and copyright, in addition to routinely representing clients in cancellation, nullity and opposition actions. ‘Spectacular‘ practice head Farah Molino is well versed in the management of IP portfolios nationally and internationally and has a particular strength in the copyright area, acting as local adviser to collective management organisations in Panama.
‘The team stands out for its efficiency, excellence, knowledge and track record.’
‘An exceptional team that has worked with us for many years. Farah Molino stands out.’
‘Prompt service and good value for money.‘
‘The team are a pleasure to deal with and clearly know the local law.‘
‘Farah Molino has a down-to-earth approach but without compromising on technical quality. In a particularly difficult matter she was able to help us navigate the local systems in Panama and was always timely with advice and support.‘
‘Farah Molino is spectacular – I love being able to work with her. She makes sure that matters are satisfactorily resolved in a reasonable amount of time. She is always present, in order to be involved and follow up. I feel very calm working with Farah.‘
‘They respond quickly but efficiently, reviewing every detail of the matter.’
Guinard & Noriega
IP is a core specialism for Guinard & Noriega, which is particularly prolific in the filing of trade marks in Panama, acting for an extensive roster of domestic and multinational clients in industries ranging from pharmaceuticals to technology and financial services. Other key areas of activity include trade mark and patent litigation, patent prosecutions and, most recently, data protection. Luis Guinard, a specialist in IP-related litigation, registrations and data privacy issues, jointly heads the practice with Vanessa Noriega, who is highly experienced in trade mark protection strategies. In the strong group of associates, María Noguera provides support with the management of clients’ trade mark portfolios, Marta Almanza focuses on litigation and María Gabriela Solís oversees international trade mark matters.
Luis Guinard; Vanessa Noriega
Las Casas de la Batería
Alimentos Carnicos de Panama
Leche y Derivados
Morgan & Morgan is noted for its robust experience in the registration of trade marks and management of portfolios in Panama and internationally, benefitting from close links to firms in other jurisdictions. It is also a strong performer in patent prosecutions and has recently been increasingly active on copyright mandates (particularly in the entertainment and software development sectors). In addition, the team frequently assists clients with regulatory issues, including health registrations, and with the IP aspects of M&A and franchising and distribution agreements. Francisco Arias steers the practice, while experienced associate Allan Candanedo is a go-to specialist in the full range of IP matters, from litigation to portfolio management and commercial agreements. Corporate associate María Eugenia Brenes brings additional IP and regulatory expertise to the team.
Louis Vuitton Malletier
The Clorox Company
LVMH Group (Celine, Givenchy, Loewe, Marc Jacobs, Kenzo, Emilio Pucci)
Hard Rock Hotels
- Coordinating the trade mark search and application process for Sea Technology in several countries in Central and South America.
- Assisting with the international IP protection of various retail brands, including the registration of RegattaSport.