Asia IP

On November 17, the United Arab Emirates Trade Mark Office notified trademark agents that it was changing the payment of publication and registration fees for accepted UAE trademark applications. Rouse, writing on its website, notes that the changes follow changes introduced in July.

“Following the changes in July, trademark applicants had an initial period of 30 days from acceptance for publication to attend to the payment of publication fees, and a subsequent 30 day period to pay the official registration fees once the opposition period ended,” the law firm wrote. “The new Ministerial decision announces that both the publication and registration fees must be paid within 30 days of acceptance for publication. Both fees must be paid at the same time.”

Rouse says this means that applicants are requested to pay the registration fees, even though there is a possibility that their application may be opposed. “The Ministerial decision makes it clear that the UAE Trade Mark Office will only consider a refund of the paid registration fees where a request is made in writing within the opposition period,” the firm wrote. “It therefore suggests that registration fees will not be refunded where an application does not progress to registration for whatever reason, unless a request is made within the opposition period.”

Rouse lawyers said the firm is clarifying the position with the officials, “it may mean that an applicant could therefore lose their application following an opposition, but still bear the cost of the significant official registration fees (approximately US$1,365), even though their mark does not register.”

Further, Rouse lawyers said that while the Ministerial decision states that the practice will only come into force once published in an Official Gazette, the UAE Trade Mark Office has already started to follow the new rules in acceptance notices issued to Rouse Dubai on November 17.