This country-specific Q&A provides an overview of Intellectual Property laws and regulations applicable in Panama.
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
RArticle 53 of the National Constitution of the Republic of Panama (Chapter 1 Fundamental Guarantees) establishes intellectual property rights in favour of the individuals (both nationals and aliens under the Republic’s jurisdiction) as follows:
Every author, artist or inventor enjoys the exclusive ownership of his/her work or
invention during the time and in the manner prescribed by law.
Various laws regulate these rights recognizing a wide variety of them:
Law No. 64 of 2012 on Copyrights and Neighbouring Rights (“Law No. 64”)
Law No. 35 of 1996 modified by Law No. 61 of 2012 on Industrial Property (“Law No. 35”)
Law No. 23 of 1997 modified by Law No. 63 of 2012 on Plant Variety Protection (“Law No. 23”).
Law No. 20 of 2000 on Special System for the Collective Intellectual Property Rights of Indigenous Peoples (“Law No. 20”)
a. Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
The following IP rights are established by Law No. 35:
Patents of Invention: New ideas applicable in the practice for the solution of a particular technical problem may be protected, as long as they are the result of an inventive step and susceptible of industrial application. An invention may be a product or a process. Supplementary protection certificates are provided for non-pharmaceutical patents due to delays in granting the patent attributable to the Patent Office.
Utility models, which are products that contain a new configuration that offers an advantage over other similar products.
Industrial Designs: They are: (i) 3D shapes which serve as type or pattern for the manufacture of an industrial good, which gives it a special appearance as long as it does not imply technical effects or (ii) a combination of shapes, lines or colours which are incorporated to an industrial good with purposes of ornamentation and which gives it a peculiar and own aspect.
Industrial and Trade Secrets that represent a competitive advantage are protected according to the provisions of Law No. 35 as long as they are kept secret, and access thereto has been restricted.
b. Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
According to Law No. 35, distinctive signs are protected, under the following figures:
Trade Marks and Service Marks: The following elements, among others, may constitute marks, to individualize a product or service in the marketplace:
Words or combination thereof, including those used to identify persons;
Images, figures, symbols and graphics;
Letters, digits and their combinations, when composed of distinctive elements.
Three-dimensional forms, including the wrappers, containers, the shape of the product or presentation, and holograms,
Colours in their different combinations;
Smells or tastes;
Any combination of the elements mentioned in the preceding paragraphs.
Collective Marks: An association of manufacturers, merchants or service providers may obtain exclusive use of a distinctive sign to identify their goods or services from those offered by non-members. They must submit their application with the rules of use of the mark.
Guarantee Marks: A person may register a distinctive sign to identify products that are certified by the owner due to a specific quality thereof. Rules of use must be submitted, including the measures of control, which the owner binds himself to enforce, and the applicable sanctions.
Slogans and advertising signs: Any combination of words or design used in advertisement may be registered provided it is original and is used with the purpose of drawing attention of the consumers to a specific product, service or commercial establishment.
Famous or well-known signs are protected even without registration.
An interested party may request the cancellation of a registration if the distinctive sign has not been used in five (5) years.
The owner of a registration may not prohibit a third party:
to perform acts of commerce with products legally marked and introduced in commerce by the owner, or a licensee thereof;
to advertise the sale of a product lawfully marked;
to use his own name or domicile provided that such use is limited for the purposes of information.
Law No 35 also protects the following IP rights:
Trade Names: The name of a company or association is protected in Panama without the need of registration,
Geographical Indications: They identify a product as originating from the territory of a country, region or locality when a certain quality, reputation, or other characteristics of the product are fundamentally attributable to its geographical origin. Both national and international GI’s may be registered in Panama.
c. Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Law No. 64 follows European continental law, and protects:
Copyrights of creative literary, artistic or scientific works, including software and databases. Moral Rights are granted in favour of the authors (individuals only) and they may not be assigned or waived. Economic rights of exploitation of the works may be assigned by the author to other individuals or corporations.
Neighbouring rights in favour of performers, producers of sound and video recordings and broadcasters.
Plant variety rights are granted in connection with new varieties or species, as long as they are uniform, distinct and stable.
Cultural identity and the traditional knowledge of Indigenous People are protected in connection with their creations, including customs, artistic expressions, musical instruments, dances, and others.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents: 20 years from the filing date
Utility models: 10 years from the filing date
Supplementary protection certificates: The total amount of supplementary protection may not exceed 7.6 years.
Industrial Designs: 10 years from the filing date, renewable for an additional 5-years term.
Industrial and Trade Secrets: Indefinite, as long as the information is kept secret.
Distinctive Signs: 10-year term, renewable for indefinite 10-year periods.
Geographical Indications: Indefinite term.
Copyrights: Moral rights are perpetual. Economic rights are subject to a 70-year term after the author’s death.
Neighboring Rights: 70 years from publication of the work.
Plant varieties: 20/25-year term from granting.
Cultural identity and traditional knowledge of Indigenous People: Perpetual
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
Patents: The inventor, always an individual. Nevertheless, regarding the inventions created in the course of employment, the employer will be the owner of the right, unless the invention has been made by chance or due to the ingenuity and meditation of the worker.
Utility models: Same as above.
Industrial Designs: The creator, always an individual. Nevertheless, regarding the inventions created in the course of employment, the employer will be the owner of the right.
Industrial and Trade Secrets: The holder (individual or entity).
Distinctive Signs: The user or the applicant, which may be an individual or entity.
Geographical Indications: The applicant, which may be an individual or entity.
Copyrights: The author, always an individual. Nevertheless, regarding works created in the course of employment, economic rights are assigned to the employer.
Neighboring Rights: The performer, the producer and the broadcaster.
Plant varieties: The breeder (individual or entity).
Cultural identity and traditional knowledge of Indigenous People: The Indigenous People, as a collective entity.
Which of the intellectual property rights described above are registered rights?
Patents, Utility Models, Industrial Designs, Distinctive Signs (with the exception of Famous Trademarks, and Trade Names), Geographical Indications, Plant Varieties and Cultural Identity and Traditional Knowledge of Indigenous People must be registered with the Panamanian Industrial Property Office.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Patents and Utility Models: The inventor or the assignee may file the application. After an examination as to the form and industrial applicability, the application is published for disclosure. Subsequently, the Patent Office conducts a Search and issues a Report on the State of the Art, which is published for comments. An opportunity to amend the claims is given to the applicant, prior to the execution of a Substantive Examination and the granting or refusal of the patent.
Industrial Designs: The creator or the assignee may file the application. After an examination as to the form and a favorable local novelty report, it is published for opposition purposes. If within a two-month period no opposition is filed, the registration is granted by the Patent Office.
Distinctive Signs: The user or the potential user, which may be an individual or entity, may file the application. After examination, it is published in the Industrial Property Bulletin. Two (2) months after the date of publication (within which opposition against the application may be filed by anyone claiming to have that right), the Directorate shall grant the registration of the Trademark.
Geographical Indications: The group of producers or a public authority may file the application. The procedure for registration is the same procedure described above for Distinctive Signs.
Plant varieties: The breeder or the assignee may file the application. The procedure for registration is the same procedure described above for Distinctive Signs.
Cultural identity and traditional knowledge of Indigenous People: The Indigenous People’s Authority may file the application. The procedure for registration is the same procedure described above for Distinctive Signs.
How long does the registration procedure usually take?
Patents and Utility Models: 4+ years
Industrial Designs: 1 – 3 years
Distinctive Signs: 10-18 months
Geographical Indications: 18-24 months
Plant varieties: 3+ years
Cultural identity and traditional knowledge of Indigenous People: 2+ years
Do third parties have the right to take part in or comment on the registration process?
Yes, third parties may comment or file an opposition on all the registration processes.
What (if any) steps can the applicant take if registration is refused?
The applicant may submit a Request for Reconsideration before the IP Office and a further appeal before the Ministry of Commerce and Industries.
What are the current application and renewal fees for each of these intellectual property rights?
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
If renewal fees are not paid in due time, the patent or registration is cancelled.
What are the requirements to assign ownership of each of the intellectual property rights described above?
To assign ownership of an IP right, it is required to submit a notarized assignment document. If the document has been executed in a foreign country, it must be further certified with the Apostille of The Hague Convention.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
The assignment must be recorded with the IP Office, in order that it is effective vis-à-vis third parties.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
To licence an IP right, it is required to reach an agreement between the owner of the IP right and the user.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
No, it is not mandatory to register a licence agreement.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Exclusive and non-exclusive licensees are not given different rights in respect of the enforcement of the licensed IP.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
There are criminal sanctions for infringement of intellectual property rights in Panama.
Our Criminal Code states that those who forfeit alter or imitate a trademark, a commercial name or an expression or sign of propaganda, a patent, industrial model or design, or copyright shall be sanctioned with imprisonment from four to six years. The same penalty applies to those who commercialize, have a product circulated, import, export, or those goods in transit through Panama with final destination to other countries, or offer or provide services with a forfeited, altered or imitated trademark.
The action may be initiated ex officio by the IP Prosecutor, who orders the provisional seizure of the merchandise and of the means used for the commission of the offending act.
The action may also be initiated by means of a denunciation submitted by the industrial property owner, before the IP Prosecutor.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
In our jurisdiction, there are Civil court proceedings, Administrative proceedings and Alternative Dispute resolution for each of the Intellectual Property Rights mentioned above in section A.
What is the length and cost of such procedures?
The length and cost for each procedure are the following:
A civil procedure can take approximately 24 months. The costs of civil proceedings will depend on the complexity of each particular case, but they might be approximately between US$3,000.00 to US$4,000.00.
The criminal procedure can take approximately 24 months. The cost of the criminal procedure is approximately US$3,000.00
For Administrative matters, it may take approximately 6 to 7 months from the day that the merchandise was seized until the National Customs Authority transfers the file to the IP Prosecutors office.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
For Civil matters, the competent courts to admit and handle Intellectual Property matters are the Civil Circuit Courts of Panama, where there are two courts specialized in antitrust and consumer matters.
Procedure: Judicial opposition complaints must be submitted together with a Power of Attorney. Once the relevant judicial opposition proceeding has been officially admitted, the court must notify the defendant of the same. Serving of notice on the defendant may be done in any of the following manners, depending on the defendant’s place of domicile:
Personally, if the defendant is domiciled within the territory of the Republic of Panama.
Through Summons by Publication if the defendant’s domicile is not known.
By means of Letter Rogatory after it has been established that the defendant is domiciled abroad.
Once the relevant court receives the defendant’s reply to the complaint, said court must proceed with the establishment of the date for the oral hearing. At the oral hearing, both parties must submit and adduce any and all evidence considered relevant and convenient to their interests (including proof of use and registration of their trademark in other countries). Upon conclusion of hearings and once all relevant evidence is submitted, the competent Court must then proceed with the pronouncement of judgment. Our legislation grants the option to file a remedy of appeal against any such judgment.
Second instance appeal proceedings are received and handled by the Third Superior Court of the First Judicial District of Panama.
For Criminal matters, the Criminal Circuit Court of Justice is responsible for conducting criminal proceedings.
The action may be initiated ex officio by the IP Prosecutor, who orders the provisional seizure of the merchandise, and the means used for the commission of the offending act.
The action may also be initiated by means of a denunciation submitted by the industrial property owner before the IP Prosecutor.
Procedure: It starts with the criminal investigation, led by the IP Prosecutor. During the criminal investigation, the IP Prosecutor must receive confirmation from an expert on the brand that the product is counterfeit so they can confirm that a crime has been committed, the damages caused by the crime, as well as the authors and participants.
The criminal investigation finalizes when the IP Prosecutor issues a Resolution recommending the indictment or dismissal of the offender. A Criminal Circuit Court of Justice handles the ruling on the indictment or dismissal during the Preliminary Hearing session. If an indictment is issued, further evidence may be submitted. The complainant may also submit claim for damages caused by the criminal act. A Final Hearing is then held, and the sentence is issued. An appeal may be filed against the judgment in first instance. A Cassation Appeal also is admissible in this type of crime.
At any stage of the criminal procedure, the Court may order the conclusion of the proceedings if the industrial property right owner and the accused jointly request so.
What customs procedures are available to stop the import and/or export of infringing goods?
The National Customs Authority has the authority to make inspections of suspect goods (mainly containers) and retain goods that may be in violation of Intellectual Property rights.
The Panama Customs Authority may inspect and retain goods awaiting customs clearance anywhere in the national territory (in transit). The Colon Free Zone Administration may also inspect and retain goods in transit in the Colon Free Zone, as well as the IP Prosecutor.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Non-Court enforcement options or dispute resolution mechanisms are not mandatory in Panama. The parties that enter into these types of resolutions do so voluntarily.
What options are available to settle intellectual property disputes?
In Panama, there are civil, criminal and private agreements in order to settle any Intellectual Property matter.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
In order to establish the infringement of each of the Intellectual Property rights mentioned in section A, it will be necessary to submit evidence of the infringement, older trademark registrations from Panama or from abroad, to have an expert confirm why the product infringes the owners Intellectual Property and proof of use of the Intellectual Property.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
The Court acquires the necessary information, most of the time, from the Titleholder. Nevertheless, the judge may request any information that they might think it will be relevant to the case.
a. Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?
There are no technical judges. The experts are appointed by the parties in each civil or criminal proceeding.
b. What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?The mechanisms that exist in Panamanian legislation are precautionary measures of non-disclosure.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
The information is reviewed by both counsels, and each counsel will have the opportunity to oppose all the information filed and expose why he opposes said information or evidence.
What defences to infringement are available?
The usual defences against infringement are non-compliance with rules and due process on the part of the plaintiff. In addition, the defendant may file a counterclaim seeking the non-existence or nullity of the IP right or base his defence on fair use.
Who can challenge each of the intellectual property rights described above?
Any person interested or that may think that has a better right, might challenge an Intellectual Property right in Panama.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
They can be challenged in the Process of registration of the Intellectual Property right and during the infringement procedure, for example Processes of Nullity and Cancellation of Trademarks.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The Civil Circuit Courts of Panama are the forum for challenging these Intellectual Property rights. The grounds for finding invalidity might be non-use of a trademark for more than 5 years or a Nullity or Cancellation action against a trademark that infringes a third party right, but for some reason, it has been registered.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Licensing agreements are allowed in Panama. The declaration relief is allowed in Panama at the request of the plaintiff or complainant.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
In Civil and Criminal Proceedings, Motions for review, Appeals, Nullity, Exceptions, and Extra-Ordinary Appeals of Cassation are available before the Supreme Court of Justice, Protection of constitutional guarantees.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The cost of enforcement proceedings depends on the evidence and actions taken for each case, i.e. contracting an expert witness. In other words, the complexity of the case will determine its costs.
In the proceeding of execution of Judgement, it is possible to request the Judge to recover some of the expenses.
Has the COVID-19 pandemic caused any changes (temporary or permanent) to the protection or enforcement of intellectual property? For example, changes to deadlines, filing or evidence requirements or court processes.
The changes generated by COVID-19 were oriented toward carrying out virtual hearings. However, the hearings are once again being held in person.
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