| p>Panamanian Intellectual Property Law No. 35 of | | | | The Attorney General's Office and the Customs |
| May 10, 1996, replaced the obsolete legal provisions | | | | Bureau are officially empowered to initiate |
| on Intellectual Property, which were in existence for | | | | investigations on Intellectual Property matters. |
| more than sixty years. This law simplifies the process | | | | The Customs Bureau and the Free Zone |
| of registering trademarks and allows for renewal of a | | | | Administration are duly empowered to keep records |
| trademark for ten-year periods. The law's most | | | | of the Panamanian Intellectual Property Registrations |
| important feature is the granting of ex-officio | | | | for companies willing to protect their intellectual |
| authority to government agencies to conduct | | | | property through barrier measures. GALINDO, ARIAS |
| investigations and to seize materials suspected of | | | | & LOPEZ offers the service of registering a |
| being counterfeited. | | | | Panamanian Trademark Registration before the |
| This new legislation introduced modem concepts | | | | Customs Bureau and the Colon Free Zone. |
| recommended by the World Intellectual Property | | | | With the information in the register, the authorities |
| Organization (WIPO), consistent with the policies of | | | | can control and even seize merchandise more |
| the World Trade Organization (WTO), thus bringing | | | | effectively at the Colon Free Zone and Customs. |
| Panama into line with international developments on | | | | These measures take importance because allowing |
| industrial property, which has reduced the | | | | an infringing product to remain on the market will hurt |
| infringement of foreign trademark rights in Panama. | | | | the right-holder's sales and lead to a risk of market |
| In addition, Panama is party to the following | | | | confusion. |
| international agreements: | | | | Some complexities involved in establishing or |
| (a) The Trade Related Intellectual Property Rights | | | | enforcing IP rights on a cross border/international |
| (TRIPS) contained in the Marrakech Treaty, | | | | scale, are time factor and expertise on the part of |
| approved by means of Law No. 23 of 1997; | | | | the authorities. In view of the seriousness of the |
| (b) The Berna Convention approved by means of | | | | sanctions involved, which require that decisions be |
| Law No. 3 of January 3 1996; | | | | taken as quickly as possible, time is of the essence. |
| (c) World Intellectual Property Organisation (WIPO) | | | | Demanding cessation of infringement only makes |
| Treaty approved by means of Law No. 93 of 15 | | | | sense if a court order can be issued quickly. For this |
| December 1998; | | | | reason, preliminary injunctions play a major part in |
| (d) The General Inter-American Convention for | | | | enforcing IP rights, since these measures are |
| Trademark and Commercial Protection approved by | | | | intended to prevent further infringement until the |
| means of Law No. 64 of 1934; and | | | | court has decided on the merits of the case. |
| (e) The Paris Convention, approved by means of | | | | On the other hand, the demand for a quick |
| Law No. 41 of 1995. | | | | procedure, leading to a very tough sanction, requires |
| In Panama, differing from other jurisdictions where | | | | expertise on the part of the judges. Only judges fully |
| cases of industrial property are of administrative | | | | versed in intellectual property matters are prepared |
| nature, since 1997, the IP jurisdiction has been | | | | to make speedy use of this prohibitory instrument. It |
| removed from the Ministry of Commerce and | | | | is also necessary to ensure the participation of |
| Industry and given to special courts with exclusive | | | | well-trained legal practitioners and attorneys. |
| competence to handle IP conflicts (ie, oppositions, | | | | Finally, costs are an issue of major practical |
| cancellations, infringement of trademarks and | | | | importance in establishing or enforcing IP rights on a |
| copyrights, etc). Also, the District Attorneys' office is | | | | cross border/international scale. With the complexity |
| specialized in the prosecution of IP rights. Since the | | | | of these matters, retaining the services of experts, |
| creation of this specialized jurisdiction within the court | | | | and of specialized legal practitioners in addition to |
| system, the proceedings regarding these subjects | | | | attorneys, imposes a heavy financial burden on the |
| have been more expedite and owners are allowed to | | | | parties. Measures such as taking evidence and |
| get a better protection of their IP rights in Panama. | | | | carrying out tests and investigations on the infringing |
| The creation of specialized prosecutors for intellectual | | | | goods also involve further costs. In some cases, in |
| property-related cases has strengthened the | | | | Intellectual Property infringement proceedings, the |
| protection and enforcement of intellectual property | | | | financially weaker party is always in disadvantage. |
| rights (IPR) in Panama. | | | | The United States concluded free trade negotiations |
| Panamanian Intellectual Property Law also includes | | | | with Panama on 2006. This trade agreement will |
| criminal enforcement and criminal penalties such as | | | | eliminate tariffs and other barriers to goods and |
| prison, which are the most effective methods and | | | | services, promote economic growth, and enhance |
| procedures in the fight against infringement of | | | | trade between the United States and Panama. |
| intellectual property rights. | | | | This trade agreement includes a chapter on |
| Another major difference from foreign jurisdictions is | | | | Intellectual Property. Conventions such as the Madrid |
| that in Panama custom authorities and administrative | | | | Arrangement concerning the International Registration |
| authorities from the Colon Free Zone, which have | | | | of Marks, and the Patent Cooperation Treaty (PCT) |
| their own special brand register, are empowered by | | | | will be mandatory in the Republic of Panama. |
| law to retain, inspect and even seize counterfeit | | | | The agreement provides for improved standards for |
| goods; in some cases, these institutions may proceed | | | | the protection and enforcement of a broad range of |
| even without the need of a claim or process in case | | | | intellectual property rights, which are consistent with |
| of suspicion of counterfeited goods. | | | | both U.S. standards of protection and enforcement, |
| On the other hand, Panama's 1994 copyright law | | | | and with emerging international standards. Such |
| modernized copyright protection and its 2004 update | | | | improvements include protections for digital products |
| created a special Copyright Office with anti-piracy | | | | such as U.S. software, music, text, and videos and; |
| enforcement powers. | | | | stronger protection for patents, trademarks and test |
| The Republic of Panama is signatory to the WIPO | | | | data, including an electronic system for the |
| Copyright Treaty and the WIPO Performances and | | | | registration and maintenance of trademarks. |
| Phonographs Treaty. The copyright office has | | | | Strengthening and improving Panama's overall regime |
| enhanced border measures and established new | | | | for the protection and enforcement of intellectual |
| punishable offenses, such as for Internet-based | | | | property rights in a broad range of areas was an |
| copyright violations which have significantly reduced | | | | important objective of the FTA negotiations. |
| the rate of VHS piracy. | | | | In Panama's climate, businesses are often looking for |
| Panama worked through the FTA negotiations with | | | | a way of putting themselves ahead of competitors; |
| the United States of America to establish a legal | | | | many companies lack a clear understanding of exactly |
| regime to combat piracy of audiovisual products over | | | | what their intellectual property is or what it's worth. |
| the Internet, including notice and take down | | | | Many businesses are unaware of the extent of their |
| provisions and clearly defined Internet Service | | | | intellectual property and the consequences of failing |
| Provider (ISP) liabilities and copy protection measures. | | | | to protect it properly. |
| At the international level, Panamanian government has | | | | Therefore, businesses are realizing the importance of |
| reinforced the legal framework and institutional | | | | an effective protection and use of intellectual |
| arrangements to comply with the existing | | | | property and companies are seeking expert legal |
| international treaties, including more effective | | | | advice to find out the best way to protect their |
| methods and procedures to all intellectual property | | | | intellectual property and also to understand how best |
| matters, such as: | | | | to enforce it. |
| Administrative enforcement, such as seizure of | | | | Some companies are tending to implement measures |
| infringing goods by a customs office; | | | | in order to have an inventory of their intellectual |
| Criminal enforcement against the infringer; | | | | property to determine what the company's |
| Civil enforcement, in which the right holder, or | | | | intellectual property is, where it is, and what it is |
| someone in possession of valid rights, such as an | | | | worth; and also to understand that managing the |
| assignee or licensee, takes prescribed legal action, | | | | company's intellectual property is more than just |
| such as in court by filing a civil action against an | | | | registering patents and trademarks. |
| infringer, and perhaps seeking an injunction; | | | | Companies are starting to implement processes to |
| Technological enforcement, in which producers of | | | | identify intellectual property that belongs to others - |
| products and services employ technological means to | | | | such as knowledge and trade secrets of competitors |
| protect IP rights against infringement (for example, | | | | that may accidentally come into their business with |
| encryption of digital copyright works). | | | | new personnel. |
| Border measures before the Customs Office and | | | | Between in-house resources and outside advisors, |
| the Colon Free Zone Authority. In order to enforce | | | | companies are making sure to cover intellectual |
| IP rights, Panamanian Intellectual Property Law grants | | | | property licensing, strategic alliance structuring, |
| discretionary powers and faculties to Customs and | | | | counterfeit and grey market tracking, due diligence |
| The Colon Free Zone authorities to conduct | | | | on partners and employees, registration of patents, |
| investigations and retain any goods suspected of | | | | copyrights, trademarks and trade secrets, intellectual |
| being imitations, including the confiscation of | | | | property valuation and royalty and revenue recovery. |
| equipment used to manufacture fake goods. | | | | |