The Republic of Panama has some of the most advanced legislation for protection of intellectual rights in general, including trademarks, patents, industrial models, publicity signs, denominations of origin and copyrights.
Law no. 34 of May 10, 1996 and Law no. 5 of August 8, 1994 provide for effective protection of intellectual rights by their legitimate owners and their exclusive use by these. To such end, it is essential that they be registered in the Republic of Panama with the exception of copyrights of foreign citizens, which are generally considered protected in this country through their foreign registers, under the international agreements signed.
Pursuant to the above, in order to claim misuse by a third party of a trademark, for instance, it is vital for the titleholder to have it registered at the Intellectual Property Register General Directorate (DIGERPI for its initials in Spanish) of the Ministry of Commerce and Industries of Panama.
Upon registration of Intellectual Right, its titleholder will have under Panamanian law, all the tools necessary for protection against misuse. Thus, and only for illustration purposes, among other things and as set forth in Article 164 of Law 35 of 1996, the titleholder has the grounds to file claims against: 1. any person manufacturing products covered by an invention patent or a utility model registered without consent of the titleholder or the respective license; 2. those who in their own products or trading goods, or services, signs or commercial publicity use a trademark, name or commercial denomination identical or substantially similar to another owned by a different person.
The law grants, in addition to the penalties contemplate in the Criminal Code, the necessary competence to civil and/or special judges in the province of Panama, to order: suspension of the right to engage in trade and industries for a period of time; suspension or cancellation of the Key or Operating Permit granted by the Colon Free Administration; to order cessation of acts contravening the law; indemnification for damages caused and the measures necessary to avoid continued or repeated violations.
On the other hand, once the rights are registered with DIGERPI, the titleholder may also opt to register them as well as any license he may have granted with the National Customs Authority and the Colon Free Zone, entities that are duly empowered to inspect and/or retain merchandise going through customs anywhere in the national territory or the Free Zone, if suspected of violating Intellectual Property or Copyrights law.
It must be pointed out that the competent authority in this matter is the Special Prosecutor for Crimes against Industrial Property, who has jurisdiction and competence to start investigations sua sponte and based on complaints or accusations filed by individuals who deem their rights have been violated.
It is important for the ready to have the certainty that Panama has a body of legislation that, although not perfect and on the way of being improved, contains all provisions necessary to start and continue administrative, civil and criminal proceedings to protect intellectual property rights. Unfortunately, at times, even when there is great will, the State does not have enough personnel at Customs, the Special Prosecutor’s office and the Colon Free Zone to process cases with the expedience they demand.
In conclusion, it must be said that even though there are in the fiscal territory of the Republic of Panama next to 3.5 million residents making Panama a small domestic market where intellectual property rights are still being breached, a significant larger number of goods (cargo) comes through the physical territory of the Republic of Panama in transit to other markets through the Panama Canal, the ports, the Processing Zones and the Colon Free Zone. Unfortunately, statistics of seizures are going up revealing that part of the goods in transit are in violation of IP rights; the harsh reality is that it is difficult to fight it unless relevant sectors of government have the number of officials demanded by the situation to perform inspections, retentions, investigations and bring to justice those who insist in taking advantage of someone else’s ingenuity for personal gain.
The author is a partner in the law firm Morgan & Morgan and President of the Panamanian Association of Intellectual Property Rights (APADEPI for its initials in Spanish).