Trade mark filing systems around the world vary greatly and filing applications in some regions can be more daunting than others to trade mark owners. This can be for several reasons including: timeframes, stringent procedural requirements, and above all, costs.
Over the last few years, there has been a sharp increase in official trade mark fees in the Middle East. The first significant fee increase was noticed in the United Arab Emirates (UAE), followed by Kuwait, and more recently, Syria and Bahrain.
The level of fee increases varies depending on the territory and stage of the trade mark lifecycle; for example in the UAE, Bahrain and Syria, trade mark filing fees have increased about 2.5 fold in recent years, being in the region of about USD300 per application. In Kuwait, the increase has been almost ten-fold, but despite the scale of this, the new application fees still remain under USD300. Multi-class filings are generally not permitted in the Middle East and therefore, proprietors seeking to file a trade mark for a variety of goods and services can find that upfront costs are high, with an uncertain outcome.
The greatest surge in fees appears to be related to the publication and registration phases (on average these are in the region of USD1500), though fees in Syria still remain very modest (~USD320). On the whole, the most expensive territory to protect trade marks appears to be the UAE, where registering a single trade mark application in a single Class costs nearly USD3500 in official fees alone. But it is not only the cost of protection that has jumped – opposition and appeal fees in the UAE can set proprietors back by almost USD3000 per application.
No official reasons have been given for the fee increases, but with these, there has come a gradual improvement in overall efficiency, including a shift to online services and the reduction of backlogs. Whilst obtaining trade mark registration more swiftly than in the past is undoubtedly of benefit to proprietors, the high costs of protection may act as a deterrent to businesses with a limited IP budget. Both Bahrain and Syria are members of the International (Madrid) Trade Mark system, and proprietors may find that in certain cases, using this route could be cheaper than filing national applications.
In addition to high filing costs, applicants should also be wary of formality requirements when filing trade mark applications in the Middle East. Applications usually have to be accompanied by supporting documents such as a power of attorney and if applicable, priority documents. Often, these can be submitted after filing an application, but the strict submission timelines must be adhered to, otherwise the application may be deemed abandoned.
In the case of foreign applicants, accompanying documents will usually require notarisation and legalisation also. Arranging these formalities can take several weeks, depending on consular service times. Applicants should therefore factor in plenty of time to arrange for formality requirements to be met and ensure that there is sufficient time to dispatch the original documents to the local attorney.
For more information on trade mark fees in the Middle East, please contact Emma Pitcher
or your usual Boult Wade Tennant Advisor.