To ensure efficiency and streamlining with international best practice, namely in trademark prosecution and the enforcement of registered rights, the UAE Ministry of Economy has issued an administrative order to decrease and waive some of the core official fees associated with their trademark registration and enforcement services.
Following an increase to such fees in 2015, the UAE Trademark Office was urged by trademark owners to consider a reform of this decision. Whilst the number of filed and examined marks has somewhat declined since 2015, this decrease can in part be attributed to the reduction of illegitimate marks filed in bad faith and those filed with intention to benefit from pre-existing rights.
The UAE Ministry of Economy has decreased and waived more than 100 nominal fees across different departments and sections, such as commercial agencies, the Trademark Office and Copyright Office. Notably, the Trademark Office has reduced its registration fees by 33%. This follows the introduction of steps to ensure the complete protection of trademark rights with the full integration of an online system for all trademark prosecution services and e-filings. This full electronic integration, operational since January 2019, has reduced the volume of administrative work for officials and has enhanced examination efficiency. On average, it now takes less than 6 months to complete the entire process of filing, examination, publication and registration of new trademarks. In the past, this time frame was considerably longer, taking approximately 12 months or more, to complete the process.
Prior to the reduction in fees for trademark registration, the applicable fees in the UAE were considered among the highest, if not the highest, in the world. As a result, officials received substantial requests to reconsider such rates and bring the cost in line with international standards. Eventually, in July 2019, decision makers at the UAE Ministry of Economy decided to adopt and publish a list of service fees to be reduced and waived relating to trademark registration, renewal inspection in enforcement of trademarks and parallel import complaints. The new nominal fee for trademark registration was reduced by 33%, decreasing the official fee for registration from AED 10,000 to AED 6,700. This move is expected to encourage brand owners to increase their protection in the UAE to cover various elements such as shapes, slogans, terms, colours and other core components of brand integrity.
Additionally, grievances or appeals before the Trademark Appeal Committee from provisional refusal or office action by examiner is now available free of charge. This used to be subject to a fee of AED 5,000.
In addition to the above, officials at UAE Ministry of Economy recognise the necessity to offer an accessible and proactive enforcement system. Therefore, a decision was made to waive the official fees associated with any request or application made by trademark owners to officials at the Trademark Office to investigate incidents of trademark infringement. Registered commercial agents in the UAE also benefited from the wavier of certain fees as they are no longer required to a pay fee to seek protection from parallel import by virtue of issuing administrative circulars to notify registered commercial agencies rights to border authorities, i.e. UAE Customs. These fees were previously mandatory following administrative enforcement action taken before the Ministry of Economy in anti counterfeiting and infringement cases and the enforcement of commercial agencies rights against grey market/parallel import shipments.
BSA is keen to see brand owners benefit from these new arrangements and urges all professionals in the IP field to partake in continuous dialogue with UAE Ministry of Economy to encourage enhanced protection which is both affordable and aligned with international standards.
For any enquiry or additional assistance in trademark prosecution, enforcement of IP rights, commercial agencies or general IP legal services in the UAE and the wider Middle East region, contact Head of Intellectual Property, Munir Suboh.