This is an informal case summary prepared for the purposes of facilitating exchange during the 2026 WIPO IP Judges Forum.
Session 6: Comparative, Referential and Expressive Use of Trademarks
Third Superior Court of Justice, First Judicial District, Panama [2024]: Productos Alimenticios Pascual, S.A. v Jonzac Properties, Inc. and H. Tzanetatos, Inc.
Date of decision: November 12, 2024
Issuing authority: Third Superior Court of Justice, First Judicial District
Level of issuing authority: Appellate Instance
Type of proceedings: Judicial (Civil)
Subject matter: Trademarks
Plaintiff/Appellant: Productos Alimenticios Pascual, S.A.
Defendants/ Respondent: Jonzac Properties, Inc.; H. Tzanetatos, Inc.
Keywords: Infringement; Unauthorized use; Industrial property rights; Advertising slogan; Cessation of infringing acts; Provisional measures; Prima facie case; Fumus boni iuris; Risk of delay; Periculum in mora; Counter-security; Precautionary protection; Proportionality
Basic facts: The plaintiff established a prima facie case through the registration of its advertising slogans “NUESTRO CAFÉ” and “CAFÉ DURÁN, NUESTRO CAFÉ Y DISEÑO” in International Class 30, and showed that the defendant was using advertising signs in local stores bearing the phrase “CAFÉ TEZZORA” together with the slogan “TU MOMENTO, NUESTRO CAFÉ”, as well as on LED screens located in Panama City, on internet sites, websites, Instagram and Facebook.
The court of first instance had granted the lifting of the measure of immediate cessation of the activity relating to printed and digital advertising, commercials, advertisements in magazines, radio, television, the internet, social media, etc., of the slogan “TU MOMENTO, NUESTRO CAFÉ”, used jointly with the trademark “CAFÉ TEZZORA”, stating that the unauthorized use of the advertising slogan “NUESTRO CAFÉ” by the defendant was a matter to be resolved in the decision on the merits.
The Superior Court, at second instance, reversed the first-instance decision, holding that the prima facie case, the risk of delay in the proceedings, the counter-security and the legal situation susceptible of precautionary protection had been established; it therefore maintained the provisional measure of cessation of the unlawful activity in order to safeguard the outcome and effectiveness of the decision on the merits, as well as against any damages that might be caused to the plaintiff by the infringement of its industrial property right in the advertising slogans “NUESTRO CAFÉ” and “CAFÉ DURÁN, NUESTRO CAFÉ Y DISEÑO”—specifically, the use of the advertising phrase “NUESTRO CAFÉ” by the defendant company in its advertising.
Holding: The Court reversed Order No. 67 of January 22, 2024, issued by the Eighth Civil Circuit Court of the First Judicial Circuit of Panama (first instance), which had lifted the provisional measure ordering the cessation of the alleged infringement of the advertising slogans “NUESTRO CAFÉ” and “CAFÉ DURÁN, NUESTRO CAFÉ Y DISEÑO.”
Accordingly, the Court reinstated the provisional measure, preventing the defendants from using the allegedly infringing slogan “TU MOMENTO, NUESTRO CAFÉ” in advertising, social media, and other promotional activities while the underlying infringement proceedings remain pending.
Relevant holdings in relation to comparative, referential and expressive use of trademarks: The decision addresses the use of a registered advertising slogan within another party’s advertising slogan and the availability of provisional protection pending a final determination on infringement.
Relevant legislation: Law No. 35 of May 10, 1996, on Industrial Property (PA002); Law No. 61 of October 5, 2012, on Amendments to Law No. 35 of May 10, 1996, on Industrial Property (PA038); Judicial Code of the Republic of Panama.