02 May 2021

Extensions of time for Powers of Attorney in UAE trade mark matters

Authored by: James Dunne

In Brief:

  1. For brand owners for which the UAE is a market of interest, the reduced official fees from April 2020 for trade mark matters have made protecting a brand in the UAE significantly more cost effective than before.

  2. A year later, a change in practice from 11 April 2021 means that it is now possible file a trade mark application and submit the supporting Power of Attorney within 30 days. For a ‘first to file’ jurisdiction such as the UAE, this change of practice can mean the difference between securing an earlier trade mark right before a third party or not.

  3. Unlike trade mark applications, trade mark oppositions in the UAE still require a valid POA in place at the time of filing the opposition - late filing is not possible.  Where the UAE is a market of interest, putting a valid POA in place as a pre-emptive step is a cost-effective strategy. Even if not used to file a trade mark application, the POA can be relied upon to oppose a third-party application before it reaches registration, and avoid the time and expense of seeking to cancel a registration before the UAE courts.

On 11 April 2021, the UAE Trade Mark Office confirmed a significant change of practice regarding legalised Powers of Attorney (‘POA’) for trade mark applications.

a.) Previous requirements for POAs for trade mark matters

Prior to 11 April 2021, non-UAE based applicants were required to have a fully legalised POA in place at the time of filing the application. It was not possible to file a trade mark application to secure a filing date and then submit the supporting POA later. The only exception was in the case of an imminent priority deadline and, even then, whether late filing of the supporting POA would be permitted was at the discretion of the UAE Trade Mark Office.

The time taken to obtain a legalised POA depends on the country in which the applicant is located and the ‘chain of authentication steps’ required under the prevailing national law and practice in that country.

Since the UAE is not a member of the Hague Convention, it is not possible to obtain the quicker ‘Apostille legalisation’ which does not require consular legalisation. Instead, POAs issued overseas for use in the UAE must be:

  1. executed before a notary in the applicant’s country;

  2. authenticated by the various government departments in the applicant’s country; and

  3. legalised up to the local UAE consulate in that country.

Additionally, the original legalised POA must be super-legalised here in the UAE before the Ministry of Foreign Affairs, following which the POA can be relied upon to file trade mark applications (or carry out other activities granted under the powers of the POA).

For many countries, these legalisation steps meant that a number of weeks would pass before a trade mark application could be filed in the UAE. Additionally, since the UAE is a ‘first to file’ jurisdiction, this mean there was a risk of a third party filing first in the UAE for a similar or identical trade mark while the applicant’s POA was undergoing the legalisation process. This third party filing could pose a risk to the use or registration of the applicant’s later filed trade mark.

b.) Effect of COVID-19 and change of practice

The emergence of COVID-19 in 2020, and resulting global lockdowns over the course of 2020 (some of which continue into 2021), meant that government departments and local consulates in many countries around the world either closed, were on reduced capacity, or would only process legalisation requests by post.

This has added considerable time to securing POAs in many countries around the world and, as a result, delayed the ability to file a trade mark application in the UAE and secure the earliest possible filing date.

Helpfully, the new change of practice allows a trade mark application to be filed in the UAE with an undertaking that the original legalised POA is submitted within 30 days of the trade mark filing date. This additional time will be welcomed by brand owners, many of whom are experiencing delays in the authentication of documents in their home countries.

This change of practice also follows on from the substantial reduction to official fees for trade mark matters introduced in April 2020.

Both of these changes make it easier, and cheaper, for brand owners to file trade mark applications in the UAE and protect their valuable trade mark rights.

c.) Paris Convention trade mark filings

In some cases, a trade mark applicant may have already filed for the trade mark in other country that is a member of the Paris Convention for the Protection of Industrial Property (the ‘Paris Convention’). 

If so, that applicant may have up to 6 months to file a trade mark application in the UAE and, as a result, have time to obtain the necessary POA.

According to the World Intellectual Property Organisation (‘WIPO’), there are 177 members of the Paris Convention at the time of writing. These include the UAE.

Under the Paris Convention, an applicant filing a trade mark in one of the Paris Convention countries (the ‘first filing’) can file for the same application in other Paris Convention countries. Provided that these subsequent applications are filed within 6 months of the first filing, those subsequent applications will have rights calculated from the date of first filing and not the date on which they were actually filed. The filing date in the subsequent countries, and which may include the UAE, is effectively ‘backdated’.

Considering the ‘first to file’ system of the UAE, this means that the applicant can secure an earlier filing date than others. However, not all trade mark applications will be able to benefit from a Paris Convention filing basis but we can advise if this is possible.

d.) No change to POA requirements for oppositions

It is important to note that, as at the time of writing, late filing of a POA is not possible for UAE trade mark oppositions.

The current requirement for a valid POA (legalised in the case of non-UAE opponents) to be in place at the time of filing the opposition remains unchanged. It is not known whether this will change in the future.

Given that the non-extendable opposition period for UAE trade marks is 30 days, it may be that a legalised POA cannot be obtained before the opposition deadline is reached.  In that case, and should the application proceed to registration, cancellation proceedings before the UAE courts would be required to try to cancel the resulting registration.

Conclusion/Recommendation:

These practice changes, together with the reduction of official fees, are making the UAE more accessible than ever for brand owners wishing to protect their trade mark rights.

For the UAE, three ‘takeaway’ factors to consider in any brand protection strategy are:

  1. The timing of when to file a trade mark application in the UAE to take advantage of the new late filing period will depend on how long it is taking to complete the legalisation process in the applicant’s home country. We can advise on the timing of the filing strategy to ensure that the original legalised POA can be submitted by the end of the 30-day grace period.

  2. While Paris Convention filings may not be possible for all trade marks or trade mark applicants, we can advise on suitable international filing programs that may enable a trade mark applicant to have enough time to secure a legalised POA for use in the UAE but still be able to benefit from a ‘backdated’ filing date.

  3. If the UAE is a market of interest, or potential interest, we recommend registering the relevant trade marks to protect these rights. However, if the available budget does not permit trade mark filings at this stage, but the UAE remains a market of interest, we recommend ensuring that a valid POA (legalised if required) is put in place in the UAE. This will provide the ability to, at the very least, oppose third party trade mark applications of concern and meet the non-extendable opposition deadline before that application matures to registration. In this way, the much greater costs of trying to cancel a registered trade mark before the courts may be avoided.

Should you have any questions on these changes, or on trade marks in the UAE generally, please email us on trademarks@hadefpartners.com or get in touch with James Dunne, Head of Trade Marks and Brand Protection or your usual Hadef & Partners contact - https://www.hadefpartners.com/Expertise/26/Intellectual-Property

 
 

This article, including any advice, commentary or recommendation herein, is provided on a complimentary basis without consideration of any specific objectives, circumstances or facts. It reflects the views of the writer which may, in some cases, differ from those of the firm, especially in the developing jurisdiction of the UAE.