Trademarks Office now requires power of attorney at time of filing
The UAE Trademarks Office has announced a significant change in practice which takes effect as from May 1 2014. Under this new practice, all trademark applications, renewals, recordals, oppositions and other actions filed with the Trademarks Office must be accompanied by a fully notarised and legalised power of attorney upon filing. This replaces the previous practice which allowed the power of attorney to be submitted within 60 days of filing.
No transitional provisions have been announced. Accordingly, the new practice applies to any new trademark application, opposition or other action filed before the Trademarks Office which requires a power of attorney.
The impact of this change will primarily be felt by entities not based in the United Arab Emirates. This is because of the legalisation requirement for powers of attorney executed outside the country. The process commonly takes three or more weeks, which means that, in cases where there is a tight deadline with the Trademarks Office, it may not be possible to complete the legalisation process in time to meet that deadline. In particular, the following actions will be affected by the new practice:
- Trademark oppositions - the deadline for filing a trademark opposition is 30 days from the date of publication. This deadline is non-extendable. Accordingly, in order to oppose a trademark in the United Arab Emirates, non-UAE businesses must receive notification of the publication of potentially conflicting applications within just a few days of publication so that they can put in place a power of attorney before the opposition deadline.
- Priority applications - in order to meet the six-month deadline for filing priority applications in the United Arab Emirates under the Paris Convention, non-UAE entities must start the process of putting in place a power of attorney at an early stage so that the legalisation process can be completed and the power of attorney can be available in the United Arab Emirates before the priority deadline. Leaving the decision as to whether to file a priority application until just one or two weeks before the priority deadline may well result in the applicant being unable to claim priority in the United Arab Emirates.
- Any other time-critical matters before the Trademarks Office - the change in policy may also have an impact on renewal applications where the original power of attorney has expired or a new agent is instructed on the renewals.
The biggest concern for entities based outside the United Arab Emirates is how the Trademarks Office's new practice may limit their ability to oppose potentially conflicting trademark applications in the United Arab Emirates. Such entities should contact their local representative in the United Arab Emirates in order to put in place a procedure for identifying potentially conflicting trademark applications at the earliest possible stage (within a maximum of one week of the UAE Official Gazette being published each month).
This should provide sufficient time to put in place a notarised and legalised power of attorney to support any opposition that may be required.
This is particularly important given that the Trademarks Office has also recently been working to clear a backlog of trademark applications. A number of temporary examiners have been recruited specifically for this task and, in May 2014, the Trademarks Office issued one of its largest Official Gazettes to date with more than 8,500 trademark applications published for opposition purposes.
Non-UAE entities which have already put in place a power of attorney appointing a local UAE representative will be unaffected by this new practice. Provided that it has been validly executed, notarised and legalised, they should be able to continue to rely on the existing power of attorney for future trademark applications, renewals, oppositions and actions before the Trademarks Office.
This new practice will also have a limited impact on UAE businesses, which must submit a power of attorney that has been notarised, although not legalised.
Rob Deans and Jon Parker, Clyde & Co, Dubai
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