Key Considerations when Changing Representatives for Trade Mark portfolios in the Middle East and North Africa Region

There are numerous reasons which may cause a brand owner to consider a change of representation for all, or part, of their trade mark portfolio. However, for businesses with large trade mark portfolios which span multiple jurisdictions, possibly held across multiple entities and which consist of both current and heritage brands, a change of representative can seem like a cumbersome and expensive task, often entailing onerous document requirements and significant costs. Add to that the (not always infrequent) changes to official requirements in some jurisdictions, and the whole endeavour can seem rather overwhelming. However, if properly managed and with the right strategy in place, it can be a straightforward and smooth process.

We set out below some of the key considerations that brand owners should bear in mind when thinking about changing representatives in the Middle East and North Africa (MENA) region.

Official Fees

In some countries in the MENA region, an official fee must be paid to the relevant Trade Mark Office in order to record a change of representative.

In the table below, we set out in which countries such official fees apply and in which they do not do not:

Countries with no official fees to change agent

• Algeria
• Iraq
• Kurdistan
• Lebanon
• Morocco
• Tunisia
• Yemen

Countries where a change of agent is not possible

• Saudi Arabia

As these fees are usually payable per registration, it is a good idea for brand owners to use the change of representative as an opportunity to carry out a general audit of their portfolio, to identify any registrations for marks which are no longer used and in which the business no longer has any interest – brand owners should consider whether any such marks may simply be allowed to lapse at the next renewal deadline, rather than incur fees for them in the transfer.

Powers of Attorney

Most countries in the region require a notarised and legalised power of attorney (POA), although there are some exceptions. Legalisation can carry significant government fees, and can (in some countries) sometimes be a lengthy process.

There are some countries in the region where an Apostilled POA may be accepted in lieu of a legalised one, namely: Bahrain, Oman, Saudi Arabia, Pakistan, Morocco, and Tunisia (all of which are members of the Apostille Convention). Authentication by Apostille usually means a reduction in costs, but the requirements may still be complicated.

The costs of putting in place Powers of Attorney in each of the relevant territories should be considered for budgeting reasons, and brand owners should also consider timelines for upcoming deadlines to ensure that an authorised representative is able to attend to any such deadline.

In Saudi Arabia, where it is not possible to record a change of representative, holding a valid POA will still allow the brand owner’s chosen representative to represent them in enforcing and protecting its rights if and when required e.g. with the local courts and enforcement authorities.

Other points to keep in mind

As mentioned above, a portfolio transfer provides an opportunity to conduct a general audit of a brand owner’s trade mark portfolio to exclude marks no longer in use. Further, if certain trade mark registration details are inaccurate, it can mean that the rights themselves are vulnerable to attack, so identifying and rectifying such issues is also a good idea.

• Recordal can be approached in phases to help manage costs. For example, prioritising the change of agent recordal for marks with upcoming renewal deadlines and any other upcoming deadlines, as a first step.
• If a change of name, a change of address or an assignment or transfer of ownership has occurred, these recordals can be filed in conjunction with the change of representative recordal, which can reduce the legalisation and administrative fees, as well as processing times.
• Executing one master POA with suitable sub-delegation rights granted to the new representative can help make the process more manageable at the brand owner’s end. Typically, under the powers of the master POA, sub-delegation POAs can be issued by the new representative for each of the countries of interest to the client.

For most businesses, their brands are key assets – and often the most valuable assets the business holds. Therefore, entrusting your brands to the care of the right representatives is vitally important. While a change of representation can seem like a daunting task, as outlined above, with the right strategy and under the right guidance, it can be a seamless process.

As part of DLA Piper’s global trade mark team, we manage global and regional trade mark portfolios for some of the biggest brands in the world and we are well versed in such transfer processes, ensuring that we do so in the most cost efficient, risk free and timely way for our clients.

For more information please reach out to:

Saba Al Sultani, Partner
Rachel Pieris, Associate