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OPPOSITION,
CANCELLATION AND NULLITY ACTIONS AGAINST TRADEMARKS
AND SERVICE MARKS
Oppositions,
cancellations and nullities are special proceedings
tried according to the grounds established in
our Trademark Law No. 35 of May 10, 1996, before
the Commercial-Civil Courts and not before the
Panamanian Trademark Office.
Law
No. 29 of February 1, 1996, which became effective
on May 3, 1996, ordered the creation of the Commercial-Civil
Courts, which have jurisdiction to hear the following
cases:
Opposition actions against the registration
of trademarks, service marks, trade names, collective
marks, warranty marks, industrial designs or
models or advertising slogans or signs;
Nullity and cancellation actions of
industrial property rights;
Actions against the unlawful use of
intellectual property rights;
Consumer’s protection
Counterclaims
Counterclaims
shall be admissible for the following cases:
When the defendant opposes the registration
of a trademark or trade name belonging to the
plaintiff and used as basis for formalizing
its opposition;
When the defendant requests the cancellation
of the industrial property right, the registration
of which is the basis for the plaintiff’s
opposition.
Cancellation
and Annulment of Registrations
Non-use
of a trademark for five (5) consecutive years
in the domestic market of the Republic of Panama
or in the international market is a ground for
requesting the cancellation of the registration.
The
right to claim the nullity and/or cancellation
of a mark will prescribe in ten (10) years following
the date of issuance of the certificate of registration,
except for those cases where the registration
has been obtained in bad faith.
Requirements
Power
of Attorney executed by the Plaintiff,
attested by Notary Public and then legalized with
the Seal of Apostille or by a Panamanian Consulate.
If the Plaintiff is a legal person or
entity, a document issued by the proper governmental
authorities (i.e. Register of Companies) in the
country or state of origin of the Plaintiff, certifying
the legal existence (Certificate of Good Standing)
of the company. This document must be duly legalized
by a Consul of Panama or by the Seal of the Apostille,
if appropriate.
It
is possible to file an Opposition or Cancellation
action without the Power of Attorney and Certificate
of legal existence of the Plaintiff by posting
a bond of US$ 300.00 to guarantee that the documents
will be duly filed within the two-months term,
counted as from the date of admission of the Opposition
or Cancellation complaint.
Proofs of the existence of prior rights
to submit as evidence in Opposition or Cancellation/Nullity
proceedings:
To
demonstrate the existence of registered trademarks
it is necessary to submit the following:
Certified copies of the registrations
or certified copies of extracts of the trademarks
issued directly by the corresponding Trademark
Offices of each country, which have to be duly
legalized with the Seal of Apostille or by a
Panamanian Consulate. Certifications issued
by the corresponding Trademark Offices in each
country, duly legalized, are also valid. Simple
copies or copies certified by a Notary or an
Officer of the company are not valid, even if
they have been legalized or are included in
an Affidavit.
To
demonstrate use of a trademark, it is recommendable
to submit the following:
Original or copies of advertisements
or publications made by the Plaintiff of the
goods sold or services rendered under his earlier
trademark, that have appeared in newspapers,
catalogs or magazines of international circulation
prior to the date of filing of the conflicting
application/registration. The material should
be as old as possible but there should also
be evidence of the current use of the mark.
Original or copies of commercial invoices
evidencing the sales made by the Plaintiff of
the goods manufactured or sold or the services
rendered under his earlier trademark, in any
country of the world, prior to the date of filing
of the conflicting application/registration.
The material should be as old as possible but
there should also be evidence of the current
use of the mark. A Notary Public should certify
the copies of invoices as true copies.
Samples, labels or packaging of the
goods, if applicable.
The
above described evidence material will be submitted
before the Court during the evidentiary hearing
and not with the complaint itself. However, the
information about the existence of trademark registrations
and prior use of the signs, which serves as basis
for the Opposition or Cancellation action is necessary
to prepare the corresponding complaint.
Overview
of the Opposition, Cancellation and Nullity Proceedings
Filing of the complaint before the Commercial-Civil
Court, on duty, against the conflicting application
within the term of two (2) months, counted as
of the date following the publication of the Official
Bulletin;
The appointment of the Judge who will
hear the case and the subsequent admission of
the complaint;
Service of the complaint on the defendant
party. The defendant shall be notified of the
complaint in accordance with the following rules:
[1].When
the defendant is domiciled within the court’s
jurisdiction, the service shall be made in
person;
[2].When
the defendant is domiciled outside the court’s
jurisdiction, but in the Republic of Panama,
or abroad, service shall be made by way of
letters rogatory, in accordance with the procedure
established in the Judicial Code.
Answer to the complaint. It can be answered
by the local attorney of the defendant or by a
public defendant appointed by the Judge to represent
him, if the defendant does not appear before the
court, once it has been properly served;
Evidentiary hearing, where the parties
will submit and adduce the evidence material to
support their pleadings.
Once
these steps have been duly completed, the Judge
will proceed to review the pleadings and the evidence
submitted by each party to render the first instance
decision.
The
loosing party may file an appeal recourse against
the first instance decision. Once the appeal is
granted, the commercial-civil court delivers the
case to the Third Superior Court of Justice to
fix the term, in order for the defendant to support
the appeal. A term of ten days shall be set; the
first five days for the appellant to support his
appeal and the remaining five for the counterpart
to oppose. The decisions rendered by the Third
Superior Court of Justice are firm and finals.
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