mardi, juillet 06, 2010

United Arab Emirates: Opposition practice and procedure: new hearings officer, same procedural traps

Opposition practice and procedure: new hearings officer, same procedural traps

Contributed by Clyde & Co


The UAE Trademarks Office (TMO) has recently appointed a new official to decide opposition cases. This is welcome news. However, those unfamiliar with opposition proceedings in the United Arab Emirates may find the absence of a regulated structure difficult to negotiate. Many procedures originate from the customary practice of the TMO, rather than from a clearly defined legislative framework.

New hearings officer

The TMO recently appointed a new hearings officer to hear trademark oppositions and to manage the conduct of opposition proceedings.

For approximately six months before the new appointment, the TMO did not have a person responsible for the conduct of opposition proceedings. Therefore, the new hearings officer faces a backlog of cases that are awaiting a hearing date. Practitioners are also waiting to receive decisions on numerous oppositions that were heard over the previous three years.

Practitioners have already begun to receive notices of hearing from the TMO and some decisions have been issued. This is welcome news and indicates that the new hearings officer has commenced work on the backlog.

Legal framework

The UAE Federal Trademarks Law (37/1992) (as amended by Federal Law 7/2002) and Ministerial Decision 6/1993 Concerning the Implementing Regulations for Federal Law 37/1992 provide a very basic framework for the conduct of opposition proceedings:

  • A written notice of opposition must be lodged at the TMO within 30 days of the last publication of the application that is being opposed.
  • The TMO must forward on the notice of opposition to the applicant within 15 days (there is no obligation on the opponent to serve the document on the other side).
  • The applicant has 30 days from receipt of the notice of opposition to lodge a written reply with the TMO. This will not automatically be forwarded on to the opponent by the TMO and there is no obligation on the applicant to serve it on the opponent.
  • If a reply is not lodged within 30 days, the application is deemed abandoned.
  • If a reply is lodged, the TMO must hear the submissions of either or both parties, if a party requests to be heard.
  • The TMO has the power to issue a decision (usually following a hearing) either by accepting or rejecting the application, or by imposing any restrictions or conditions on the application which it deems appropriate.

Aside from the above points, there is no further guidance in the Trademarks Law or the regulations on how opposition proceedings are to be conducted.

Frequently asked questions

For practitioners used to a structured environment, the Trademarks Law may appear somewhat sparse. Set out below are answers to questions which practitioners from other jurisdictions might ask when managing an opposition in the United Arab Emirates.

Is there a minimum standard for the contents of the notice of opposition or the reply?
No. As far as the Trademarks Law is concerned, the only requirement is that the notice of opposition or the reply be in writing. In practice, a very basic statement will suffice.

At the time of the hearing, the hearings officer may refer back to the grounds alleged in the notice of opposition. Therefore, it is good practice to set out all potential grounds of opposition in the notice of opposition and allege the basic facts on which the opponent relies. However, there is nothing to prevent new grounds or facts from being introduced at the time of the hearing.

The TMO does not routinely assess the merits or quality of the notice of opposition or the reply at the time that they are submitted. However, a brief formality check will be conducted to assess whether the documents are in order and have been lodged within the stipulated deadline.

Is there provision for an exchange of evidence between the parties?
No. Evidence can be submitted at any time by either party. In practice, if they are relying on evidence, the parties present it on the day of the hearing.

Arriving for a hearing with no indication as to the nature or extent of the evidence which the other party may produce can be intimidating. However, both parties are in the same position. Each has the opportunity to ambush the other.

As a matter of practice, the hearings officer will ask that the other party be given a copy of whatever evidence is submitted (although this is not always strictly enforced). The hearings officer will usually, if requested, agree to a short adjournment (most likely two weeks) for either party to submit further evidence after the hearing. Hence, there is a small window of opportunity to counter surprising material from the other side.

Any evidence must be translated into Arabic, which can take time.

Is there any provision for time extensions?
No. The deadlines to submit the notice of opposition and the reply are clearly prescribed by the Trademarks Law and strictly enforced. It is not possible to extend these 30-day deadlines.

The weekend in the United Arab Emirates falls on Friday and Saturday. Deadlines falling on these days (or on any public holiday) carry over to the next working day.

Is there a formal ability to adjourn proceedings?
No. Most deadlines stipulated by the TMO are non-extendable. Therefore, no unilateral adjournments are granted. However, if both parties agree to an adjournment of the hearing on the basis that they are negotiating, then the hearings officer is usually willing to grant an adjournment. In this case, the parties may execute a letter requesting adjournment, which should be presented at the time of the hearing.

Is there a requirement that submissions be exchanged before a hearing?
No. As with evidence, written submissions can be presented on the day of the hearing.

In reality, many practitioners in the United Arab Emirates do not provide the hearings officer with written submissions. However, practitioners may submit either skeleton or comprehensive written arguments, as well as oral submissions either before the hearing or at the hearing itself. The submission of written arguments helps to ensure that the notes taken by the hearings officer are complete and accurate and, hence, that the key points are well understood.

How much notice will be given of a hearing date?
Hearing notices may be issued with as little as 15 days' notice to prepare for the hearing (with no formal ability to have this extended). Commonly, 30 days' notice of a hearing is given.

There is a significant backlog of hearings waiting to be held and decisions waiting to issue on hearings conducted several years ago. At present, hearing notices are being issued at regular intervals. However, there is no pattern to the order in which a matter might be set down for a hearing. Accordingly, parties should be prepared to attend a hearing at any time and with very short notice.

For this reason, parties should prepare evidence and draft submissions as soon as practicable after the exchange of notice of opposition and reply.

If only 15 or 30 days' notice of a hearing is given, there is rarely sufficient time to compile and translate evidence.

How is the hearing conducted?
At the hearing, the procedure is very flexible with no restriction on the material which may be submitted.

There is no reason why new arguments or grounds of opposition cannot be introduced on the day of the hearing even if they have not previously been raised in the notice of opposition or the reply.

Both parties attend the office of the hearings officer and are given turns to speak. The hearings officer will type notes of the points being made as the parties' representatives speak. For this reason, it is advisable to keep the points made in oral submissions brief and directly to the point.

While it is not mandatory to provide written submissions to the hearings officer which elaborate on the oral arguments, it is advisable to do so.

Outlook

For the time being, there is no indication that the opposition procedure will change in the United Arab Emirates. As more hearings are conducted, it is apparent that an informal set of practices is evolving to deal with situations as they arise. Access to information about these practices is difficult and can be acquired only through experience or discussions with fellow practitioners.

For further information on this topic please contact
David Moore at Clyde & Co by telephone (+971 4 331 1102), fax (+971 4 331 9920) or email (david.moore@clydeco.ae).