A new UAE law (Cabinet Decision No. 3 of 2017), has confirmed that the late filing of Powers of Attorney before the Trade Mark Office is no longer permitted.
Although this new law may seem innocuous, it will have an immediate and significant impact on brand owners, particularly those based outside the UAE. This is because of the legalisation requirement for Powers of Attorney executed outside the UAE. The legalisation process commonly takes three or more weeks, the new law will therefore have an impact on:
- Trade mark oppositions: The deadline for filing a trade mark opposition in the UAE is 30 days from the date of publication. This deadline is non-extendable. Accordingly, in order to oppose a trade mark in the UAE, it will be necessary for non-UAE businesses to 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 UAE under the Paris Convention, it will be necessary for non-UAE based entities to 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 UAE before the priority deadline. Leaving the decision to file a priority application until just one or two weeks before the priority deadline may well result in failure to meet the priority deadline.
- Any other time critical matters before the Trade Mark Office: For example, this change in law may impact renewal applications, where the original Power of Attorney has expired or a new agent is being instructed on the renewals.
For many years, the Trade Mark Office was willing to allow Powers of Attorneys to be submitted after the filing of a trade mark application or an opposition provided the applicant submitted a written undertaking to submit a Power of Attorney after the filing.
However, with effect from 1 May 2014, the Trade Mark Office changed this practice and it required all trade mark applications, renewals, recordals, oppositions and other actions filed with the Trade Mark Office to be accompanied by a fully notarised and legalised Power of Attorney.
A second solution became available on 30 May 2015 when Cabinet Decision No. 9 of 2015 introduced an official fee for the late filing of Powers of Attorney. From this date onwards, the Trade Mark Office was willing to accept new filings without a Power of Attorney on the basis that the Power of Attorney could be submitted after filing upon payment of the applicable fee.
However, the new law (Cabinet Decision No. 3 of 2017) repeals the relevant provisions of Cabinet Decision No. 9 of 2015 and, as a result, the late filing of Powers of Attorney is no longer permitted.
The major impact of the new law is on non-UAE based entities which do not already have in place a Power of Attorney appointing a representative in the UAE. These entities should ensure that they have a procedure in place so that they receive notice of potential oppositions in the UAE within a few days of publication.
Non-UAE entities which already have appointed a local UAE representative under a Power of Attorney are unaffected by the new law. Provided that the Power of Attorney has been validly executed, notarised and legalised it should be possible to continue to rely on that Power of Attorney for future trade mark applications, oppositions and actions before the Trade Mark Office.
This new practice will also have limited impact on UAE businesses, which only need to submit a Power of Attorney which has been notarised rather than legalised.