Use or Registry: Which guarantees protection of a trademark?

Confusion may arise as to deciding when to register a trademark, when is protection granted or really needed.  Trademarks are registered every day in many countries around the world and many treaties have been signed to extend this protection worldwide.  Nevertheless, the specific time to register and the when protection is granted is sometimes unknown to the owner of a trademark.

As it is commonly known, the most common method for protection of a trademark is by means of its registration in the Trademark Register.  In fact, most countries consider that trademark protection is only granted when the registration is made.  This entitles the owner of the trademark to prohibit third parties from using his trademark property.

On the other hand, trademarks are also protected when by their use they have achieved enough recognition in the marketplace.  However, this is a very weak way of protecting a trademark and such kind of reputation takes many years to be formed.

Panamanian Law is no different from other countries in the application of the aforementioned principles.  According to article 96 of Law No. 35 of May 10, 1996, which regulates Industrial Property in the Republic of Panama, the right to register a trademark is obtained by the use of the same.  The right to the exclusive use of the same is acquired by its register.

The preferred right to obtain the registration of a trademark in Panama is subject to the following rules:  1.  The preferred right to obtain the register is granted to the person that is using the trademark since the most ancient date, 2.  When the trademark is not in use, the registration is granted to whomever presents first the petition, or to the person that alleges the most ancient priority date.

Notwithstanding the latter, Law 35 further states that in order to present an opposition to the use of a trademark by another person it is necessary to have registered the trademark.  But, it is not necessary to have the trademark registered to oppose the registration by another party or request its annulment or cancelation, as long as the opponent proves having used the same previously.  Persons with rights with respect to a famous or renowned trademark may oppose its non-authorized use and its registration, as well as petition for the annulment of the register of the trademark if the same has been granted.

Much jurisprudence has been issued regarding famous and notorious trademarks.  Famous trademarks are protected by the Panamanian Law when the same establishes that trademarks that are identical, similar or like, in the orthographic, phonetic, visual or conceptual aspect, to another used, known, registered or trademark in process by another person, to distinguish the same products or services, of the same class or similar to those that are wished to be protected with the same trademark, as long as such similarity or likeness, of one and the other is subject to provoking in the mind of the public, errors, confusions, equivocations or deceit, regarding those products or services, or their origin cannot be subject to registration in the Panama Trademark Registry.

Law No. 35 also states that those trademarks that are the same or similar to a famous or renown trademark, to be applied to any product or service, or the notorious or known ones, to be applied to product or services determined according to the consumer group to which it is directedare not eligible to registry.  Due to the confusion the aforementioned definitions may cause, the latest tendencies are to divide the famous and notorious trademarks.  If a party claims the trademark is notorious, then such party must prove such condition, mere asseverations are not enough in these matters.  This will be subject of a following Panama IP Report.

Returning to the subject matter of this IP Report, Panama Law recognizes both the use and the registration of a trademark for protection of the same.  This fact was confirmed in jurisprudence issued by the Third Superior Court of Justice of the First Judicial District of Panama in the case of Agua Cristalvs.Aqua Cristalina and design.  In this case, the registration of the trademark Aguas Cristalinas was opposed due to the fact that their registry had expired and in the interim Agua Cristal petitioned for registration.  Aqua Cristalina and designproved that although their registration had expired, they have been in the market with continuous use of the trademark since 1994.  The decision of the court recognized the value of use for protection of the trademark.  If the position of the court would have been contrary, the person who petitions for a trademark due to the expiration of a previous trademark in the same class, could be considered to be free-riding in the market, making use of the reputation made by the trademark whose registration had expired.  The simple register of a trademark does not give the trademark the prestige, recognition and commercial preference, reason why the position of the trademark is kept even though the registration may expire.

The before-noted jurisprudence confirms the value of continued use in the protection of a trademark, but definitely the best way to secure protection is by means of registration of the trademark in all countries where the same is to be used.

Gilda Berman de Vilar