MENAP: Powers of attorney for trademark filing - necessity or burden?
While many countries do not require a power of attorney (PoA) from a trademark applicant to their local agent, this is still mandatory in all Middle East and North African countries, including Pakistan (MENAP). It usually comes with the requirement for notarization followed by legalization by the consulate in the applicant's home country and sometimes even super legalization in the destination country. Let us discuss the advantages and disadvantages of the current situation as well as opportunities for improvement.
MENAP IP: innovations vs. anachronisms
In a time when artificial intelligence (AI) surpasses the capabilities of its human designers, and we look to Mars with longing eyes, what was once science fiction has become the new normal. This brave new world is built on firm foundations of Intellectual Property (IP). And this, in turn, compels patent and trademark offices (PTOs) to employ new tech-savvy ways of facilitating the filing and prosecution of IPRs, so that they may continue to play their vital role in our economy. Yet, in the midst of all this innovation, we also find some good old practices in place, timeworn procedures that tower over the IP landscape like remnant protectors of a bygone age. The day is dawning to re-evaluate these practices in the light of the current digital age. Our seven-part series will highlight some of these outstanding IP oddities and comment on opportunities for change and all-important innovation.
Managing Director Dennemeyer & Associates UAE
Should PoAs be mandatory?
The first issue is whether PoAs should be a requirement for trademark filings at all since many jurisdictions such as the United Kingdom, the United States and the European Union do not demand them.
The obvious justification for mandating a PoA is that it provides legal certainty that the owner indeed authorized the trademark application filing in their name. While this is a reasonable concern per se, an alternative to demanding a PoA by default would be to require authorization only in cases of doubt or an objection by a third party or the alleged applicants themselves.
Moreover, a general PoA from an applicant simply authorizing an agent to file trademarks in their name is not clear proof the applicant really instructed every individual application that the agent then files. Pursuing the need for legal certainty to its logical conclusion, the agent would have to provide a specific PoA for every separate filing.
Finally, one might question both the likelihood that an agent or malevolent third party file trademark applications in someone else's name and the feared harm to the alleged applicant that the PoA requirement is trying to prevent. Thus, while there do not seem to be any unequivocal benefits of PoAs for trademark filings, they incur costs and require additional administrative efforts on the side of applicants.
Should PoAs be legalized?
This last point becomes all the more evident in cases where the legalization – and in some countries, even the local super legalization – of PoAs is mandatory for trademark filings.
On the one hand, this provides even more substantial proof of an agent's authorization compared to countries that require only a signed PoA, such as Morocco or Tunisia. This desire for watertight documentation is particularly understandable in countries like Iraq, where smooth processes and even just the storage of records have been immensely affected by years of war and unrest.
Additionally, it must also be acknowledged that legalizations are a source of revenue for countries. And while the associated costs are an immediate deterrent for applicants, the overall costs of doing business are still much lower, for example, in the Gulf Cooperation Council (GCC) compared to the European Union, as the Gulf countries have not yet implemented a corporate tax. Thus, if the legalization fees are seen in the bigger picture of general business costs, these concerns might not be so grim. The issue of fees and expenses will be a recurrent theme in this series of articles.
On the other hand, several arguments speak against requirements for legalization (and super legalization).
The apparent disadvantages for applicants are the time, effort and money invested in legalizing documents. This can be a discouragement to filing applications in the first place for startups, small- and medium-sized enterprises (SMEs) and others who operate on a very restricted budget.
Especially in countries where a legalized PoA is required at the time of filing, any lag in receiving this can also lead to protection gaps: such as getting a later priority date or missing the priority deadline of a previous application.
These adverse effects of issuing legalized PoAs also create and maintain a monopoly for agents that already hold PoAs. Once an agent has a PoA, an applicant will be discouraged from switching to another agent due to the mentioned delay, effort and cost involved when issuing a new PoA. Thus, access for new agents is restricted in practice, stifling competition and leading to lower-quality services.
Moreover, coming back to the example of Iraq and the massive administrative backlog at the Trademark Office (TMO) due to years of strife, one could argue that imposing as few formal requirements as possible would be desirable as this would allow a swifter procedure.
Mandating too many formal requirements for foreign applicants might also go against the spirit of the national treatment principle (equal treatment of foreign and national applicants) as stipulated, inter alia, in the Paris Convention and the TRIPS Agreement.
Should PoAs be time limited?
Limiting PoAs in time, as is the case in Saudi Arabia, where PoAs expire after five years, might be a solution to mitigate the risk of monopolies of agents. However, where an applicant is satisfied with their current agent and has no intention of changing, it imposes additional costs and effort for the repeated issuance of PoAs.
Should applicants pay fees for changing an agent?
As the recordal of a change of representative requires some administrative action from the TMO, a small official fee is understandable. However, this fee should be minimal lest it again become an obstacle for a change of agent, thus further impeding competition among agents.
While PoAs have a certain benefit related to legal certainty, many objections remain against mandating PoAs for trademark filings. In particular, requirements of legalization (and local super legalization) appear to be too burdensome, causing delays, difficulties and costs for applicants. This acts as a deterrent to filing trademark applications in certain jurisdictions, especially where the alternative route through the World Intellectual Property Organization's (WIPO's) Madrid System is available.
The situation also leads to monopolies for certain agents that already hold PoAs, hindering access for new agents and discouraging applicants from changing agents even when they are unhappy with the service, which brings the danger of lowering standards through the inhibition of competition.
Despite the fact that all countries in the MENAP region still require PoAs in one form or the other, some only need signed PoAs (such as Morocco or Tunisia). Others only ask for notarized PoAs (e.g., Pakistan), while some have joined the Hague Apostille Convention (most recently Saudi Arabia), making foreign documents' attestation significantly easier.
It remains to be seen if other countries will hold on to these legalization requirements or if mandatory PoAs for trademark filings will eventually be a thing of the past in the region.
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