The UAE Ministry of Economy has significantly increased the official fees charged by the UAE Trade Mark, Patent and Copyright Offices.
Official fees for filing a trade mark application or renewal, for example, have doubled from £1,100.00 to £2,200.00* per class.
Furthermore, the prosecution of trade mark applications has changed, in that examiners have ceased the practice of issuing objections. This means that the opportunity to file a response to an objection has been removed – examiners will now only accept an application (with or without imposing a condition) or simply reject it. The only option available then is to file an appeal, and the fee for appeals has now also significantly increased, from £50.00 to £875.00*.
Deciding on whether to oppose a later-filed trade mark application in the UAE will now also require careful consideration; the official opposition fee has increased by 4,000% from £50.00 to 1,755.00*.
There is, of course, no way to avoid the official fee increases. However, there are some things clients can consider when looking to file trade mark applications in the UAE going forward:
- Where a trade mark is not a “house mark”, and where a short commercial lifespan is foreseen, in some instances it may be appropriate to file a composite mark (i.e. word and logo, or English and Arabic words) rather than filing separate applications.
- Careful consideration should be given to the drafting of an application’s specification of goods and services to ensure it complies with local regulations. Covering the class heading may be prudent.
- Pre-filing searches are now even more important, if not vital, to allow applicants to identify potentially conflicting earlier trade marks which may be cited during the examination process, particularly to avoid wasted application fees if an earlier right is likely to be an automatic bar.