Arias, Fábrega & Fábrega represents Annco, Inc. in securing the exclusive rights over its trademark Ann Taylor at the Panama Industrial Property Office.  However, our trademark application was rejected by the Trade Mark Office of Panama, due to the prior existence of an identical trademark application Ann Taylor, in the name of the Mexican company Holzer y Cia, S.A. de C.V.  Therefore, we filed a Remedy of Reconsideration against the rejection of our application, and, likewise, requested the Panamanian authorities to maintain our application in abeyance, pending of the result of an opposition suit that against the Holzer’s trademark, we were preparing at that time.  Thus, the identical trademark Ann Taylor was published and subject of opposition suit by our client, based on the prior rights of Annco, Inc. over its well-known trademarks Ann Taylor and Ann Taylor Loft in the international commerce.  However, after serving notice of the suit, the counterpart withdrew the application.  Consequently, the Reconsideration was resolved in our favour and we have been able to register the well-known mark Ann Taylor and now the portfolio of marks of Annco, Inc., to wit, the trademarks Loft, Lou & Grey, and an assortment of designs, in our country.

Therefore, the important of this case was that we were able to maintain our trademark application in abeyance, as well as its prior rights in our country, as a result of the provision introduced by Law No. 61 of October 5, 2012, and we were able to stop the bad faith of the Mexican company which pretended to take advantage of the recognition of the well-known mark Ann Taylor in our country.  The registration of the aforesaid application would have infringed the Panamanian Law, Article 6 inquiries of the Paris Convention (Law No. 41 of July 13, 1995) as well as Article 3 of the General Inter-American Convention for Trademark and Commercial Protection.

Our legal team filed the application and the Remedy of Reconsideration against the rejection of the trademark Ann Taylor at the Industrial Property Office.  Also, we designed the strategy to follow in this case, the arguments to be vested in the opposition suit and listed the evidence that we will need to receive in order to support our allegations. 

The opposition suit was filed and handled by Mrs. Durling, until the trademark application of the Mexican company was withdrawn.