New trademark opposition procedures cause concern

After many years of a growing backlog of trademark opposition cases awaiting a hearing, the UAE trademark office is now making a concerted effort to clear the backlog in the next few months. In order to achieve this ambitious objective, opposition hearings are being scheduled with as little as a couple of days’ notice. The result is that those acting for the opposition parties are scrambling to advise their clients, prepare documents, obtain instructions and be available to attend a hearing in Abu Dhabi at the specified time. In some cases, the opponent has filed only skeleton arguments expecting to have time to file developed arguments and evidence if necessary. Although clearing the backlog is a noble objective, not everyone is content with the manner in which it is being done.

On February 22 2015 the Ministry of Economy issued administrative decision No 2 of 2015 in relation to the determination of oppositions. In summary, the decision provides:

1. The ministry must be informed of the latest developments in cases such as the absence of a response, settlement or abandonment of the opposition.
2. Publication samples must be filed in order to calculate the opposition deadline.
3. The hearing fee must be paid before the hearing.
4. All supporting documents must be legally translated.
5. After the hearing, a decision will be issued immediately without granting further time.
6. Anyone appointed to appear at a hearing must be able to speak and write Arabic.
7. The permitted time for the hearing will be 30 minutes.
8. If the ministry requests further documents or information, it must be provided within three days.

There are a number of causes of the current backlog of cases. One has been the lack of resources at the ministry – something that appears to have been addressed (apparently by bringing in more examiners). Another major issue has been that the UAE trademark law and regulations contain very few provisions about how opposition cases are to be conducted. The parties have a right to be heard (Article 15 of the Trademark Law), but there is nothing that addresses the issues mentioned in the February practice note. Something as simple as calculating the opposition deadline can be difficult. There are three publications of the application and the 30-day opposition period starts from the last publication, which is not necessarily the one in the official journal (the other two are in local newspapers) – hence point 2 of the practice note.

There is no requirement for the applicant to serve its reply on the opponent, although the applicant is entitled to a copy of the opposition as filed. This means that the opponent often goes to the hearing knowing nothing of the applicant’s case in support of its application or how it replied to the case raised by the opponent. There are no rules about what can be done at the hearing and so it is common for the parties to hold back all of their evidence and submit it at the hearing – each seeking to ambush the other. Generally speaking, the law and regulations do little to assist the parties to narrow down the issues to the relevant ones and to disclose all the relevant facts in advance. Perhaps many more cases would have settled or not proceeded to a hearing had the pre-hearing case procedures been more effective. The backlog we now see has been growing and well-known for many years. Not acting sooner has forced these new and somewhat tough requirements to be introduced, notably with hearings for all cases, however complex, to be no longer than a mere 30 minutes (presumably 15 minutes for each party).

Trademark advisors in the United Arab Emirates witnessing these developments are predicting that the new procedures for clearing the opposition backlog will only move the backlog to the level of the committee (to which there is a right of appeal). Ultimately, unless the opposition procedures are fully reformed and the regulations amended, there will very likely be a backlog of opposition cases somewhere in the system.

Peter Hansen, Hogan Lovells, Dubai