How to manage your trademark portfolio in the Middle East

By Omar Obeidat, Al Tamimi & Company
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Do you really need an experienced trademark attorney to manage your trademark portfolio in the Middle East, or can you simply manage your trademarks through entrusting the agent that quotes the least in its professional fee? Does it really justify appointing a solid but somewhat expensive attorney if you know what classes are relevant, and how to choose your mark?

In order to answer these questions, you will need to survey the functions of the trademark offices in the Middle East and understand whether one can read the trends of the examining officers or the registrar, and accordingly anticipate what is registerable and what is questionable. How can you read trends in the ever-changing staff at the United Arab Emirates (UAE) Trademarks Office? How can you read trends in the Kuwaiti Trademarks Office, which does not provide the service of a trademark search? Or in the Kingdom of Saudi Arabia (KSA) Office, where examination decisions vary drastically according to examiners sitting next to each other in the same office.

Omar Obeidat Al Tamimi & Company Partner, Head of the Intellectual Property Department Al Tamimi & Company
Omar Obeidat
Al Tamimi & Company
Partner, Head of the Intellectual Property Department
Al Tamimi & Company

Challenge and prevail

When one analyses the functions of the trademark offices (TMOs), one might question whether it is worthwhile and safe to protect trademark rights in the region. This author would not go that far, however it requires a lot of time and effort to challenge and prevail against rejections or opposition decisions taken by the TMOs.

Perhaps the UAE, being a progressive example of TMOs in the Middle East, can be studied alone as an example supporting the argument that a qualified and experienced trademark attorney should be the prime objective of trademark owners, and not professional fees. The number of unusual decisions issued by the UAE’s TMO in relation to trademark prosecutions in recent years was alarming to both trademark attorneys and trademark owners.

Several communications have been made through industry associations, as well as through trademark practitioners, in relation to the decisions made by the TMO that were not consistent with the Trademarks Law or with the usual practice adopted by the TMO, not to mention best practices of TMOs on an international level. Some of these decisions related to expediting the revenue generated from trademark applications, while others related to expediting the prosecution process at the expense of quality, and still others related to decisions that contradicted logical timeframes that could be managed by trademark owners.

Examples of these decisions occurred in 2009, where the Trademarks Section for a temporary period obliged all trademark applicants to pay the registration fee of US$1,300 prior to becoming due, which meant that trademark applicants and attorneys were required to deposit huge amounts many months earlier than the usual projected date, otherwise their applications would be deemed abandoned.

This practice was inconsistent with the implementing regulations and with the applicable practice at the TMO. It resulted in exerting pressure on the trademark attorneys to advance huge amounts on behalf of their clients, which in many cases was impossible due to the UAE having arguably the highest registration fees in the world. It also strained the relationship between the trademark attorneys and their clients as it reflected a wrong perception of mismanagement of the prosecution file. It is worth mentioning that the UAE and KSA TMOs are among the world’s most expensive for official fees.

Another example of unusual decisions by the UAE TMO was a circular dated 19 May 2014, issued under administrative decision No. 3 for 2014, where the TMO communicated to all trademark attorneys its decision to:

  • Cancel issuance of preliminary technical examinations;
  • Cancel any time extension offered by the examination department to restrict the decisions of the examination departments to either acceptance or rejection, or acceptance by way of stipulation; and
  • Issue decisions to reject applications that contravene the list of products and services mentioned in the international (Nice) classification for goods and services.

Not an option

Cancelling preliminary technical examinations means that rectification of minor changes or clarifications raised by the Trademarks Section is no longer an option. This would inevitably increase the number of rejection decisions, and consequently increase the number of objection cases adding yet more files to the backlog. A simple issue such as submitting a renewed trade licence, which could have been resolved through technical examination report, has now became a serious matter and can be subject to a rejection decision.

One could rationalise the ministry’s direction to relieve their staff of paper work and reduce time spent on examinations, however the end result is that it leads to more work by other departments within the Trademarks Section (those dealing with rejections). Appealing rejection decisions requires the trademark attorney to have kept court judgment principles and findings in relation to trademarks in order to bring a convincing appeal to reverse the TMO decision.

No justification

Finally, the power of attorney requirement was also stipulated at the time of filing oppositions, which is even more burdensome and has no justification. Opposition actions are raised in reaction to publication in the Trademark Journal. From the date of the publication, interested parties are given 30 days to consider filing oppositions, and now the ministry stipulated the power of attorney has to be submitted within that same period. If powers executed outside UAE authorised signatories are available, and if all documents are in place, then a three-week period is anticipated. Considering the notification process of conflicting trademarks requires the parties to be present, and also requires research of the Trademark Journal and consumes at least a week, then there is no wonder that many interested parties are deprived of filing their oppositions in time due to the tight timeframe and unnecessary formality. This in turn means that a lot of would-be oppositions turn into cancellation cases that must be raised as a civil case before the Court of First Instance. In these cases your trademark attorney must be a qualified law office/lawyer to be able to initiate the cancellation case.

Managing your trademark portfolio in the Middle East requires a switched-on experienced attorney that maintains records and examples ready to be presented to challenge the TMO decision, with sufficient financial strength to address unusual changes in the prosecution process, and qualified to bring about legal actions to reverse TMO decisions.

Omar Obeidat is a partner and head of the intellectual property department at Al Tamimi & Company

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E-mail: o.obeidat@tamimi.com

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