06 Apr 2020

UAE - SUBSTANTIAL REDUCTIONS TO OFFICIAL FEES FOR TRADE MARK MATTERS

Authored by: James Dunne

In brief:

  • Following on from a series of official fees reductions in July 2019, the UAE Ministry of Economy has announced further reductions to official fees in the UAE.
  • The reductions are substantial and come into effect from Sunday 5 April 2020.
  • This article focuses on trade marks, the official fees for which are reduced the region of 25%.

Following on from a series of official fee reductions in July 2019 (see our article here for more details), the UAE Ministry of Economy has announced further reductions to official fees in the UAE pursuant to UAE Cabinet Resolution No. 20 of 2020:

  • The reductions apply to official fees for a range of matters, not just in relation to intellectual property.
  • The reductions come into effect from Sunday 5 April 2020.
  • For trade mark related official fees, the reductions are in the region of 25%.

The focus of this article is in relation to trade marks and, as seen from the table and graph below, the overall costs of registering a trade mark have been reduced to within AED 500 of the pre-2015 registration costs.

Summary

As previously reported, the period 2015-2016 saw official fees for trade mark matters rise in the UAE and other countries of the Gulf Cooperation Council (GCC).

In some cases, the fee increases doubled the cost of certain steps. While this resulted in an increased pressure on legal budgets, the importance of the UAE as market for global brands saw a continued pattern of trade mark filing programs.

The July 2019 official fee reductions were a welcome relief to brand owners with the cost savings enabling a broader filing program to be undertaken, either in the UAE or into other GCC countries also.

The current round of reductions will be of great assistance to brand owners, particularly during the period of economic pressure arising from the COVID-19 crisis around the world.

When do the reduced fees come into effect?

The reduced fees come into effect from Sunday 5 April 2020 and are not retrospective. As a result, which reduced fees will apply will depend on what stage the particular matter is at.

For example, a trade mark application filed before 5 April 2020 but not yet published will have incurred the official filing fees under the previous rate but will benefit from the reduced official fees for the publication and registration stages.

Overview of the fee reductions

A summary of the reductions for the most common trade mark related matters are:

Stage

Pre-5 April 2020 fees  (AED)

New Fees (AED)

Saving (AED)

Search

500

350

150

Filing

1000

750

250

Publication (official gazette)*

1000

750

250

Registration

6700

5000

1700

Renewal**

8700

6500

2200

 

For the benefit of our international colleagues, the USD summary is:

 

Stage

Pre-5 April 2020 fees  (USD)

New Fees (USD)

Saving (USD)

Search

137

96

41

Filing

273

205

68

Publication (official gazette)*

273

205

68

Registration

1825

1370

455

Renewal**

2370

1780

590

*Publication must also take place in two local newspapers. Those charges will be depend on the size of the particular advertisement and do not fall within the official Ministry of Economy fees.

**The official renewal fees comprise: official fee for application for renewal (AED 750); official fees for publication (AED 750) and the official fees for the renewal itself (AED 5000).

Assuming a straightforward application from filing to registration with no objections or oppositions, the  official fees for one mark in one class have reduced substantially from AED 8700 to AED 6500 (approximately USD 2371 down to USD 1780). To this would be added the fees for the publication of the application in two local Arabic newspapers.

Historical comparison

If we compare the changes in the official fees over the last 5 years, it can be seen that we are now within AED 500 (USD 137) of the registration fees in place before the first round of fee increases on 29 May 2015.

It is worth noting that, until 29 May 2015, the registration fees had largely remained unchanged for nearly 10 years.

A detailed comparison of the fee changes in the last 5 years can be seen below (in AED):

Stage

Pre 29 May 2015

29 May 2015 to 7 July 2019

7 July 2019 to 4 April 2020

5 April 2020 onwards

Search

250

500

500

350

Filing

500

1000

1000

750

Publication (official gazette)*

500

1000

1000

750

Registration

5000

10000

6700

5000

*Exclusive of publication fees in two local newspapers

In graphical terms, the latest round of reductions is dramatic:

 

 

Opposition proceedings

The latest fee reductions have also seen a 25% reduction in the official fees for a trade mark opposition. These have been reduced from AED 10,000 to AED 7,500 (approximately USD 2723 to USD 2055).

This reduction will be of particular benefit to those brand owners seeking to enforce their rights in the UAE and prevent the registration of a similar or identical third party trade mark application.

As a matter of good practice, and considering that the costs of cancelling a registered trade mark in the UAE can be significant, we recommend that brand owners i) have sufficient prior registered rights in place and ii) monitor publications in the UAE Official Gazette to identify any marks of concern. This will enable oppositions to be filed in the non-extendable opposition period of 30 days and potentially avoid the risk (and cost) of having to deal with an application that matured to registration. 

We can structure a suitable watching service to enable brand owners to identify, evaluate and, if necessary, oppose any third party trade mark applications of concern. The 25% reduction in the official opposition fees will make such brand protection strategies even more effective.

What do these reductions mean for brand owners?

This latest round of reductions is much broader in scope than the July 2019 fee reductions and now includes all stages of the trade mark registration process as well as other trade mark related matters.

As a result, the perception that the cost of registering a trade mark is “too high” in the UAE has been negated and, as seen above, we are effectively back to the same trade mark registration costs as pre-May 2015.

This latest rounds of official fee reductions now provides a compelling case and financial incentive for trade mark registration in the UAE, particularly where a brand will be subject to licensing, franchising or distribution arrangements.

It is also important to bear in mind that, when comparing costs or registration in the UAE with the costs of registration in other jurisdictions, that the comparison takes into account all costs.

For example, and unlike the USA, the UAE does not require evidence of use to secure a trade mark registration or to provide periodic declarations of continued use to maintain a registration. When these additional costs for a USA registration are taken into account, combined with the ability to secure a much broader scope of protection in a UAE trade mark specification than in the USA, the costs became far more comparable under the previous official fees and even more so under the reduced official fees.

Recommendations

It is far more cost effective to secure a trade mark registration at the outset and be in ‘control’ of your brand than to find that a third party (either unrelated or a distributor, partner or other entity in the supply/contractual chain) has registered the associated trade mark(s).

The Global Financial Crisis (GFC) of 2008/2009 saw numerous instances of brand owners electing to curb expenditure and not register their trade marks in some jurisdictions only to find that a third party had taken advantage of this and registered their trade marks. This resulted in costly and time-consuming steps to try and recover the trade marks, if indeed it was possible to do so.

While brand owners around the world will be carefully watching the available budgets during the COVID-19 crisis, it is essential to ensure that sufficient steps are taken to protect the brand and associated intellectual property, including trade marks, for when economic activity returns to normal.

As with the post-GFC period, the global economies will recover after COVID-19 and securing registrations for trade marks is a very cost effective way to ‘placehold’ rights in a brand in target markets and provide an umbrella of protection for the expansion of the brand and commercial activities in the future.

This round of official fees reductions recognises the financial pressures faced by brand owners and provides an excellent and cost-effective opportunity for brand owners to protect their intellectual property rights 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.