14 Jul 2019

UAE - Significant reduction to official fees for trade mark matters

Authored by: James Dunne

Brand owners in the region and internationally will be pleased to hear that the UAE Trade Mark Office has reduced the official fees for the registration and renewal of trade marks by 33%. These reductions are now in effect. Other official fees have been waived completely, leading to further cost savings for brand owners.

Background

As many brand owners are aware, the 2015-2016 period saw official fees for trade mark matters rise in the UAE and other countries in region. The increases in the UAE and Saudi Arabia were significant, with the official fees for trade mark filing, publication and registration in the UAE effectively doubling.

These fee increases, combined with the fact that the UAE is a single-class jurisdiction (each class requires a separate application), meant that the trade mark budgets of brand owners came under increasing pressure.  As a result, this initial round of reductions will be welcomed by brand owners.

Overview of the reductions

1. Reduction to the official registration fees

Stage

Previous Fees (AED)

Reduction 

Current Fees (AED)

Saving (AED)

Search

          500

        -

         500

       -

Filing

         1000

        -

        1000

       -

Publication (Official Gazette)

         1000

        -

        1000

       -

Registration

        10000

     33%   

        6700

    3300

Renewal

        12000

     33%

        8700

    3300

 

For our international colleagues, the USD summary is:

 

Stage

Previous Fees (USD)

Reduction 

Current Fees (USD)

Saving (USD)

Search

         137

        -

        500

       -

Filing

         273

        -

        273

       -

Publication (Official Gazette)

         273

        -

        273

       -

Registration

        2725

     33%

      1825

     900

Renewal

        3270

     33%

      2370

     900

 

Please note these are the official fees of the UAE Trade Mark Office only. In the UAE (as with many countries in the region), publication must also take place in two local newspapers for which separate charges are payable.

2. Official fees which have been waived

The update to the official trade mark registration fees was accompanied by the waiver of a number of additional official fees relating to trade mark matters.  This is part of a wider fee reduction/waiver process across a range of Ministry of Economy official fees pursuant to Cabinet Decision 51/2019. With regards to trade mark matters, the waiver of official fees includes (with USD equivalent):

  • Annual subscription fees to the Official Gazette of the UAE Trade Mark Office (formerly AED 1200 / USD 327)
  • Requesting cancellation (in whole or part) of a specification of a trade mark (formerly AED 500 / USD 137)
  • Appealing an office action or provisional refusal to the Trade Mark Committee (formerly AED 5000 / USD 1362)
  • Extension of time to submit a priority document (formerly AED 500 / USD 137)

Are further reductions likely?

At this point, the most significant reductions have been in the official fees for the registration and renewal of trade marks, and the waiver of the official fees to appeal a decision to the Trade Mark Committee. Other fees in the registration process remain unchanged (see the tables above) so it unknown at this point whether further reductions or waivers will be introduced. However, the reductions and waivers which have been implemented apply to the most expensive official fees and result in considerable savings for brand owners.

In addition to the UAE, 2019 has seen other official fees changes across the region. Earlier in 2019, Saudi Arabia announced that significant reductions would also apply to their official fees but, at the time of writing, these reductions had not yet been implemented. In Egypt, official fees were set to increase under Ministerial Decree No.179 dated 4 September 2019 and to come into effect on 5 September 2019 but the fee increase is currently on hold.

We will keep you updated on the position in Saudi Arabia and Egypt and other changes to official fees which come into effect in the UAE or across the region.

What does this mean for brand owners?

For the UAE, it has now become considerably cheaper to secure a trade mark registration or to maintain any existing registrations that may already be in place.

The benefits of registration are numerous, including the wider range of options that are available to enforce trade mark rights against others, and greater control of a trade mark when part of a license, distribution or other agreement with a third party.

For those brand owners considering trade mark registration in the UAE but who had, to date, been deterred by the official fees, these reductions are an opportunity to reconsider their trade mark protection strategy in the UAE.

If you require additional information on the fee reductions, or assistance with trade marks in the UAE or elsewhere in the region, please contact James Dunne (trade mark prosecution and enforcement) and Victoria Woods (distribution, licensing and franchising) or your usual Hadef & Partners contact.