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The Minister of Economy issued a decree in November 2009
reviewing Federal Law No. 1 of 1972 concerning the Authorities of
Ministries and Powers of Ministers.
The decree resulted in amendments concerning the collection of
Trademark Publication and Registration fees. Key amendments are
outlined below:
Article 1
Fees for publication of trademarks in the journal issued by the
Ministry and the fee for registration of a trademark or a group of
trademarks in relation to goods, products and services under one
class, shall be collected within 30 days from notifying the
applicant that its application has been approved for
registration.
Article 2
The Trademark Department shall notify the applicant for
registration of the content of Article 1 herein above when
notifying such applicant that its application for registration has
been approved.
Article 3
The applicant for trademark registration may, by way of a
written application to the Ministry for refund, recover the
registration fee any time before the expiry of the legally
stipulated period for objections to trademark registration, which
is 30 days from the last publication date, in accordance with
Article 14 of Federal Law No. 37 of 1992 Concerning Trademarks, as
amended.
Trademark fees payable to the Ministry of Economy include
Application fees of AED 500/- at the time of depositing the
trademark application with the Ministry. On acceptance of the
trademark, the Publication Fees of AED 500/- are payable. Details
of the trademark are then published in the Trademarks Journal and
there is a 30-day period allotted for the filing of a third party
opposition. On expiry of the opposition period (if no third party
oppositions are filed) the Registration Fees of AED 5,000/- are
payable, after which the registration certificate is issued. This
has been the practice to date but now with the issuance of this
Resolution, applicants of trademarks will need to pay the
publication fees and registration fees at the time of acceptance of
the trademark after which the trademark will be published in the
Trademarks Journal. If no oppositions are filed within the 30-day
period the trademark registration certificate will be issued.
The main difference is that the publication and registration
fees are now payable together at the time of acceptance of a
trademark, and not at different stages. The consequences of this
new procedure will be primarily felt by trademark applicants if an
opposition is filed against their trademark at the time of
publication and if the decision of the Trademarks Office is against
the applicant's trademark or if the applicant does not wish to
pursue the opposition and wishes to abandon their trademark
application. The question that arises then is, "Will the
registration fees be refunded?".
As per the amendments (Article 3), the Applicant is entitled to
a refund of the registration fees paid any time before the expiry
of the legally stipulated period for oppositions to trademark
registration, which is 30 days from the last publication date.
However, though the amendment does permit an Applicant to obtain a
refund of the fees paid, the provision may result in practical
difficulties for applicants seeking refunds. For example, if an
opposition is filed against the registration of a trademark on the
last day of the opposition period, the applicant will not have
enough time to request the Ministry for a refund of the
registration fees as the amendment stipulates that the request for
a refund must be made within "30 days from the last
publication date".
Another factor one needs to bear in mind is that the Ministry
can sometimes be slow at processing refund requests. Even if the
applicant files the request for refund before the expiry of the
stipulated time period, it may take some time before the refund is
received.
How will the Ministry refund the registration fees for cases
where an opposition is lost? In this scenario the applicant will
not be in a position to request for the registration fee refund
before the expiry of the 30 day period. The Ministry is not clear
on how it will handle such situations, and the recent amendments do
not take these factors into consideration.
This is a new procedure adopted by the Ministry of Economy. As
time progresses, and the above situations arise, the actual
practice will become clearer.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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