In Panama, trademark opposition is treated as a judicial process rather than an administrative one i.e. the oppositions are not filed with Directorate General of the Industrial Property Registry (DIGERPI). On the contrary, the opposition proceedings are conducted by specialized circuit courts in Panama.
Oppositions can be filed within two months from the date of publication of the trademark application in the Industrial Property Bulletin (BORPI).
Process of Trademark Opposition:
- Submission of Opposition/Admission of Opposition:
The trademark opposition process begins with the submission of an opposition, which can be filed with the requisite documents i.e. Power of Attorney & Certificate of Existence or without the said documents (gestoría oficiosa i.e., through unofficial representation).
- If the Opposition is filed without the Power of Attorney (gestoría oficiosa i.e., through unofficial representation)
- When the opposition is filed with gestoría oficiosa, a ruling accepting the unofficial request will be issued within five days of the opposition filing.
- Following the ruling, the opponent must pay the official fee (judicial deposit) and submit the necessary documents to the Trademark Office communicating the opposition within 15 business days.
- Once the judicial fee and documents are submitted, the unofficial representation for the opposition is officially recognized. Thereafter, within two months, the Opponent must submit the requisite documents i.e. duly executed and legalized / apostilled Power of Attorney and Certificate of Existence in Spanish (or with their Spanish translation, if not in Spanish).
Note: At this stage, the opponent may request a one-month extension if they are unable to submit the requisite documents.
- If the requisite documents i.e. executed and apostilled Power of Attorney and Certificate of Existence are not submitted, the opposition will be considered abandoned.
- If the Opposition is filed with the requisite documents i.e. Power of Attorney & Certificate of Existence
If the opposition has been properly filed, the court will admit the same (within 5 days) and issue an order to serve the opposition notice to the applicant (known as ‘the defendant’).
- Service of Opposition Notice/Notification Process:
Once an order to serve the notice is issued, the opposition is personally notified to the defendant. In case the defendant cannot be personally served in the local address provided in the challenged application, or the notification is unsuccessful, a report will be issued and an edict will be published in a local newspaper for 5 days, which will complete service of the complaint.
Publication in newspaper may take around 2 months due to the need for judicial requests (exhorto) to be processed, especially if the notification is to be sent to another province.
- Response Period:
Once the defendant receives the notification or it is published in the newspaper, they have ten days to respond to the opposition notice along with Power of Attorney through their appointed local attorney. If the notice cannot be served, the judge will appoint a defender (known as absentee’s defender) to respond on behalf of the defendant.
- Oral Hearing:
Following the submission of the response to the opposition notice, the court will schedule a hearing for the presentation of evidence. During this hearing, both parties will present their evidence and make closing arguments.
- Decision
After the hearing concludes and all evidence have been submitted, the judge will review the proceedings and evidence to render a decision, typically within 20 days of the hearing i.e. around 30 calendar days.
- Appeal:
If either party wishes to file the appeal against the decision made by the circuit court, they may file an appeal with a higher court, i.e., the Third Superior Court of Justice within ten days of being notified. If no appeal is filed, the Trademark Office is required to issue the corresponding order within next ten days.
Duration of Opposition: The Opposition proceeds usually lasts for 10-12 months and extends to 2 years, depending upon the backlog of the cases with circuit court.
Documents required in Opposition proceedings
- Power of Attorney
- Certificate of Existence of the Opponent
- Any other relevant documents that provide use of the mark in Panama or support the opposition or counter statement.
Note – All the documents and evidences are required to be legalized or apostilled by the Consulate of Panama and the same must be in Spanish. In case any document is in any other language, the same must be translated into Spanish by an authorized translator in Panama to be considered admissible in court.