MENAP: Proxies for trademark registration: necessity or burden?
While many countries do not require a power of attorney (PoA) from a trademark applicant to their local agent, it is still mandatory in all countries in the Middle East and North Africa, including Pakistan (MENAP) . This is usually accompanied by 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’s discuss the pros and cons of the current situation as well as opportunities for improvement.
At a time when artificial intelligence (AI) is beyond the capabilities of its human designers and we look at Mars with nostalgic eyes, what was once science fiction has become the new normal. This brave new world is built on the solid foundation of intellectual property (IP). And this, in turn, forces Patent and Trademark Offices (PTOs) to use new, state-of-the-art means to facilitate the filing and prosecution of IPRs, so that they can continue to play their vital role. in our economy. Yet, amidst all this innovation, we also find good old practices in place, worn-out procedures that dominate the IP landscape like protective remnants of a bygone era. The day is dawning to reassess these practices in light of the current digital age. Our seven-part series will highlight some of these exceptional intellectual property quirks and comment on very important opportunities for change and innovation.
Should PoAs be mandatory?
The first question is whether powers of attorney should be a requirement for trademark filings since many jurisdictions such as the UK, US and EU do not require them.
The obvious justification for the mandate of a PoA is that it provides legal certainty that the owner has indeed authorized the filing of the trademark application in its name. Although a reasonable concern in itself, an alternative to requiring a PoA by default would be to require authorization only in the event of doubt or objection from a third party or alleged applicants themselves.
Moreover, a blanket power of attorney from an applicant merely authorizing an agent to file trademarks on his or her behalf is not clear evidence that the applicant actually gave instructions to each individual application that the agent subsequently files. Pursuing the need for legal certainty to its logical conclusion, the agent should provide a specific power of attorney for each separate filing.
Finally, one can question both the likelihood of a malicious agent or third party filing trademark applications in someone else’s name and the feared harm to the alleged applicant that the requirement of the PoA attempts to prevent. Thus, while there do not appear to be unequivocal benefits of PoAs for trademark filings, they do incur costs and require additional administrative effort on the part of applicants.
Powers of Attorney may be required in some cases, but should not be required for all trademark registration applications. This would create an unnecessary burden on applicants and could even result in lower quality applications.
Should PoAs be legalized?
This last point becomes all the more evident in cases where legalization – and in some countries, even local super-legalization – of PoAs is mandatory for trademark filings.
On the one hand, it provides even more substantial proof of an agent’s authorization compared to countries that only require a signed PoA, such as Morocco or Tunisia. This desire for watertight documentation is especially understandable in countries like Iraq, where smooth processes and even simple document storage have been immensely affected by years of war and turmoil.
In addition, it must also be recognized that legalizations are a source of revenue for countries. And while the associated costs are an immediate deterrent to 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 Gulf countries have not yet implemented a corporate tax policy. So, if legalization fees are considered within the broader framework of general business costs, these concerns might not be so serious. The issue of fees and expenses will be a recurring theme in this series of articles.
On the other hand, there are several arguments against the legalization (and super legalization) requirements.
The apparent disadvantages for applicants are the time, effort and money invested in document legalization. This can discourage applications in the first place for startups, small and medium-sized enterprises (SMEs), and others that operate on a very shoestring budget. Especially in countries where a legalized PoA is required at the time of filing, any delay in receiving it can also lead to gaps in protection: for example, getting a later priority date or missing the priority deadline of a previous application.
These negative effects of issuing legalized powers of attorney also create and maintain a monopoly for agents who already hold powers of attorney. Once an agent has a PoA, an applicant will be discouraged from switching agents due to the delay, effort and cost mentioned when issuing a new PoA. Thus, access for new agents is restricted in practice, stifling competition and leading to lower quality services.
Legalization and super-legalization requirements can add an extra layer of bureaucracy, discouraging trademark applications by small foreign businesses.
Moreover, going back to the example of Iraq and the huge administrative backlog of the Trademark Office (TMO) due to years of conflict, one could say that it would be desirable to impose the least formal requirements as possible, as this would allow for a faster procedure.
Imposing too many formal requirements on foreign applicants could also go against the spirit of the principle of national treatment (equal treatment between 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, could be a solution to mitigate the risk of agent monopolies. However, when 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 powers of attorney.
Do applicants have to pay a fee to switch agents?
Since the registration of a change of representative requires certain administrative steps on the part of the TMO, a small official fee is understandable. However, these fees should be kept to a minimum, lest they again become a barrier to agent switching, thus further hampering competition between agents.
Although powers of attorney have a certain advantage related to legal certainty, many objections remain against the obligation to use powers of attorney for trademark filings. In particular, legalization (and local super-legalization) requirements appear to be too burdensome, causing delays, difficulties and costs for applicants. This has a chilling effect on filing trademark applications in some jurisdictions, especially when the alternative route through the World Intellectual Property Organization (WIPO) Madrid System is available.
The situation also leads to monopolies for some agents who already hold PoAs, hindering access for new agents and discouraging applicants from changing agents even when they are dissatisfied with the service, which presents the risk of lowering standards by inhibiting competition.
Despite the fact that all MENAP countries still require PoAs in one form or another, some only require signed PoAs (such as Morocco or Tunisia). Others only require notarized powers of attorney (e.g. Pakistan), while some have adhered to the Hague Apostille Convention (more recently Saudi Arabia), which makes it much easier to certify foreign documents.
It remains to be seen if other countries will stick to these legalization requirements or if mandatory PoAs for trademark filings will eventually be a thing of the past in the region.