In line with other economic relief measures implemented by the UAE Government, the UAE Cabinet issued the Ministerial Decree number 20-2020, “the Decree” on 31 March 2020 which applies further reductions on official fees for 104 different services provided by the UAE Ministry of Economy. Trademark services in particular benefit from this decree as it substantially reduces many of the core official fees associated with the registration formalities of trademarks and the enforcement of trademark rights against third parties. The Decree will be implemented immediately starting from April 5th, 2020 according to article 9 of the Decree.
Although the fees related to trademarks were already significantly reduced in July 2019, with the cost of registering a trademark in the UAE reduced by 33%, the UAE Ministry of Economy has implemented further reductions to support individuals and businesses through this time and the resulting market changes. This decree aligns trademark official fees with international standards and as a result, the UAE is no longer an expensive country to obtain trademark protection in. Following this Decree, the UAE Trademark office circulated a decision notifying all trademark attorneys and registration agents about this major reduction of fees which will apply to 26 different trademark services. Notably, this reduction brings many official fees to the same level of those applicable prior to May 2015. For reference, we set out below the common trademark services and applicable fees in light of this 31 March 2020 decree:
|Service||Old Fees from May 2015 to July 2019 In AED||Old Fees Between July 2019 and 5 April 2020 in AED
|New Fees as of 5 April 2020
|Hearing Session for Opposition||500||500||350|
|Certified Copy of Extract||200||200||150|
|Recordal of Assignment||1750||1750||1250|
The UAE Ministry of Economy has decreased official fees in the hope that it will encourage brand owners to take the opportunity to enhance their portfolio of intellectual property rights in the UAE. Overall, the official fees for prosecuting a trademark application, from filing through to registration, has fell from AED 9,700 (USD 2,650) to AED 6,500 (USD 1,770) which is an overall reduction of a further 33% since July 2019. Within this cost, the registration fee has fell to just AED 5,000 (USD 1,360) which is a 50% decrease in fees from this time last year. Similarly renewal fees have benefitted from a 50% reduction in cost from this time last year. This is indeed very encouraging for brand owners as those two services were considered the highest official fees incurred during the trademark registration and maintenance process.
The Decree has made the enforcement of trademark rights more affordable as the official cost to oppose to a third party trademark registration has fell 25% from AED 10,000 (USD 2,740) to AED 7,500 (USD 1,900). Unfortunately, whilst the current situation is capturing the attention of many brand owners and rights holders, opportunistic third parties may see this as their moment to conduct infringing activity for their own commercial gain. Therefore, it is important that companies remain vigilant in respect of the protection and enforcement of their intellectual property rights.
The Decree also confirmed fees in relation to Industrial Property, such as Patents and Know How, and has introduced Official fees to run and license Collection Societies that manage copyrights. The official fees to record copyrights remain minimal and it is determined by the Decree to be (50 AED for recordal of copyright by individuals) and (200 AED for recordal by Legal entity). The official fees for initiating enforcement action for Copyrights remain minimal and this should urge copyright owners to enforce their rights administratively before the Ministry of Economy. The fees to lodge a copyright infringement case is (100 AED for copyright owned by individuals) and (350 AED for copyrights owned by Legal Entities).
The official fees in relation to Industrial Property prosecution, such as Patent examination and re-examination official fees were included in the Decree to be 7,000 AED for examination of patent and AED 5,000 for Amendment/re-examination of Patent. Renewal of Industrial design and models protection is also determined at 1,000 AED for individual owners and 2,000 AED for legal entities’ owners. The recordal of Know How License or contract has been also included in the Decree at 200 AED for individual owners and 400 AED for legal entities’ owners. This should support the protection of Know How in terms of commerce and obtain official recognition for such rights and ease of enforcement.
The full list of the revised official fees for registration, renewal and other services are being made available to the public as outlined in the table below:
|Service||Old Fee (AED)||New Fee (AED)|
|Official Gazette for Trademarks (per copy)||100||50|
|Trademark amendment application||500||350|
|Obtaining an IPAS (whom it may concern) certificate||200||150|
|Conducting a trademark register search||500||350|
|Registration of a license||1,700||1,250|
|Cancelling a license||500||350|
|Filing fee for a trademark||1,000||750|
|Registration fee for a trademark||6,700||5,000|
|Registering a trademark under one class||10,000||7,500|
|Renewing registration of a trademark under one class||10,000||7,500|
|Submit a request for data entry in the Trademark Register by the owner of the registered trademark||1,000||350|
|Application for renewing protection period for registered mark or group or dedicated mark to indicate supervision or inspection if the application submitted during the last year of the protection period and for each mark of the marks which compose||1,000||750|
|Application for renewing protection period for registered mark or group or dedicated mark to indicate supervision or inspection if the application submitted during the followed three months of the protection period expiration and for each mark of||2,000||1,500|
|Filing a trademark opposition||10,000||7,500|
|Application for a hearing||500||350|
|Appealing a refusal decision of an application to amend an existing trademark||2,500||1,850|
|Application of temporary protection for trade mark in national and international exhibits.||500||350|
|Objection to the application for noting the registry for cancelling the entry of licensing usage the trademark||500||350|
|Penalty for late payment of registration fees per month.
(The amount may not exceed AED 10.000 a year)
|Penalty for late payment of publication fees per month (The amount may not exceed AED 1,000 a year)||100||100|
|Issuance of lost replacement certificate for a trademark||200||150|
|Grievance of dismissal decision to object to the registration of a trademark||10,000||7,500|
|Registration cancellation request of a trademark||10,000||7,500|
|Registration of a trademark proxy registration for foreign corporate.||10,000||7,500|
|Penalty for the delay in renewal fees (individual)||300||300|
|Penalty for the delay in renewal fees (local company)||500||500|
|Penalty for the delay in renewal fees (foreign company)||1,000||1,000|
|Cancellation registration of a trademark in accordance with the provisions of Article (20) bis of UAE Trademark Law||10,000||10,000|
Whilst the Decree is not officially limited in term, we would suggest to those interested in obtaining intellectual property rights in the UAE should utilize the act whist it remains in force in order to capitalize on this reduction, in case the situation changes at a later date. At present, we are seeing trademark applications move through to acceptance within a period of two weeks, which means a trademark application could proceed to registration within just two (2) months.
Nevertheless, the intellectual property community in the UAE will certainly welcome these new promising arrangements to affirm the UAE’s commitment to protect IP rights in accordance with international standards. The new reform of official fees should encourage all IP owners to protect their intangible assets locally and improve their portfolio registration.
For any enquiries or assistance with trademark prosecution, the enforcement of IP rights, commercial agencies or general IP legal services in UAE and Middle East region, contact BSA Ahmed Bin Hezeem & Associates LLP’s IP practice group.