Saudi Arabia: Fee Levels: Why Brand Owners Need To React Fast In The Middle East And North Africa

Last Updated: 28 September 2016
Article by Jon Parker

This article originally appeared in the October/November 2016 edition of World Trademark Review.

Recent fee increases are just one area of change creating challenges for brand owners in the Middle East and Africa

Since 2014 there have been significant changes to trademark law and practice in the Middle East and Africa (MENA). These have included fee increases (some steep), moves to online capabilities and, in a few countries, significant changes to classification systems. This article explains the key changes and suggests brand owners can do - now and in the future - to minimise their impact and manage portfolios more effectively in this region of increasing commercial importance.

Fee increases

Fee rises are among the most widely discussed of the recent changes. In what was already an expensive region for trademark protection, rights holders now face increases in official fees running to many hundreds of percent.

Some countries in the Gulf increased national fees when the Gulf Cooperation Council Trademarks Law was enacted, with Saudi Arabia being the most recent to do so. However, there have also been considerable increases across the wider region, including in Syria.

No official reasons have been given for the rises, although there has been a great deal of speculation as to possible motives. One of the more colourful of these is that countries are using fees to generate revenues in order to offset the fall in oil price, although it would need a staggering increase in filings throughout the region to recover some of this shortfall. The fact is that in many countries fees had not changed for more than 10 years.

Unfortunately, the rises have come at a time when rights holders are already facing considerable budgetary pressures. That said, the benefits are already apparent in some countries, where applications are maturing into registrations more quickly.

In its new fees - published when it adopted the Gulf Cooperation Council Trademarks Law in July 2016 - Saudi Arabia announced a reduction of $135 for registration fees, no change for search and assignment fees, but increases of $135 for renewal fees. It also introduced entirely new fees, such as appeal and opposition fees. The fees and the law are expected to come into force in late September 2016, three months after publication.

At the time of writing, Bahrain had announced increases to the fees it will charge for national designations of Madrid filings. These are set out in Table 1.

Minimising fee increases short term

Monitoring

When fee increases were announced for Kuwait, Saudi Arabia and the United Arab Emirates, rights holders were given advance notification, which allowed them to process their pending applications and renewals in order to try to avoid the increased fees or at least to minimise their impact.

However, this type of forward planning was not possible for rights holders in Bahrain, where the new fees came into effect within 24 hours of being announced. Rights holders should therefore continue monitoring the region closely for further fee rises and work with local counsel to try to minimise the impact of these. Where possible, steps should be taken to pay application, publication or renewal fees before any increases come into effect.

If rights holders are considering filings or have renewals in countries where fees have yet to be updated (eg, Oman and Qatar), then consideration should be paid to filing, renewing or recording any registrable transactions now, in order to avoid any possible future fee increases.

Similarly, for the United Arab Emirates, where the Trademarks Law has yet to be implemented, the possibility remains that further fee changes could be introduced. Again, rather than waiting, rights holders which intend to file, record actions or renew should consider proceedings in the near future so as to try to avoid fee increases.

Use of Madrid Protocol

Rights holders should also bear in mind that the Madrid Protocol may offer a cost-effective option. This is because in addition to the usual savings, using the protocol can circumvent the need to obtain legal documentation, which is required for national filings in almost all countries in the MENA region. In this context, Syria recently announced a reduction in its fees under the Madrid Protocol, at a time when fees for national filings are increasing.

The Madrid Protocol states located in the MENA region are Algeria, Bahrain, Egypt, Iran, Morocco, Oman, Syria and Tunisia. Other countries are also believed to be considering signing up - Jordan and Lebanon have long expressed an interest. While membership has historically been ruled out by the United Arab Emirates and Saudi Arabia, both countries have expressed interest in learning more about the Madrid Protocol more recently.

It remains to be seen whether these countries, or others, do in fact accede to the Madrid system. However, it remains an option whereby qualifying rights holders can minimise their protection costs in the region. Where possible, it is recommended that a local registration certificate be obtained once the designation is protected, in order to assist in enforcement.

Online capabilities and long-term fees

There has been a noticeable move towards online trademark applications. Over the last two years or so, the following countries have moved to online filing, which in some cases also includes online publication and renewals: Iran, Lebanon, Morocco, Saudi Arabia, the United Arab Emirates, the West Bank and Yemen. Other countries are looking to introduce online capabilities shortly, notably Bahrain and Kuwait.

The introduction of online systems often involves considerable investment - for example, Saudi officials have developed their own system. However, Table 2 illustrates that the fee increases have already had a positive impact on the efficiency and accessibility of trademark systems, with more developments yet to come.

Over the coming months and years, more national offices are likely to move to online capabilities, while offices which have already adopted such systems look set to expand their online capabilities beyond the relatively limited options currently available. This should help rights holders to obtain registered rights more quickly and so, in turn, help with enforcement in a region where registration is necessary for brand protection.

A longer-term expectation is that once the increased fees have helped to recoup investment costs, they will be reduced, as has been the case for other countries around the world.

Filing Trademark type Current fees New fees after 7 September 2016
Application or subsequent designation Standard trademark Bd274 per class (approximately $277) Bd1,710 per class (approximately $1,731)
Collective/certification mark Bd97 per class (approximately $300) Bd2,105 per class (approximately $2,132)
Renewal Standard trademark Bd137 per class (approximately $139) Bd1,710 per class (approximately $1,731)
Collective/certification mark Bd137 per class (approximately $139) Bd2,105 per class (approximately $2,132)
Country Changes Then Now
Saudi Arabia Approximate increase of $800 in publication fees in 2014 for applications and in 2016 for renewals, with further changes in Autumn 2016; online filing introduced in 2014. Examinations concluded within nine months and published nine months later, with registration granted within 24 months. New applications examined within two weeks, published online immediately and registration granted within nine months.
United Arab Emirates Official fees at least doubled in 2015; online filing introduced later the same year. Examinations concluded within 18 months and registration granted within 24 months; opposition hearings delayed by at least five years. Examinations concluded within five months and registration granted within 10 months; opposition hearings concluded within 12 to 18 months.
Kuwait Trademark Law enacted in early January 2016, resulting in increased fees. Examinations concluded within six to nine months and registration granted within 18 months. Examinations now take place within 90 days and registration most likely granted within 12 months.

Classification - recent changes

At the time of introducing their respective online filing systems, Saudi Arabia and Iran also updated their classification practices. Under the new practices, applicants can no longer use freely crafted specifications, but can choose only specific terms from adapted versions of the Nice Classification, without amendment. The two countries use slightly different adaptations.

Iran has taken its practice slightly further by also permitting terms that are not in the adapted version of the Nice Classification, provided that these are pre-approved by Iranian trademark officials. This preapproval process can take many months, although the list of pre-approved term is growing.

These classification changes have proved challenging for applicants, as they do not cover a number of commonly protected goods and services. For example, in Saudi Arabia, terms such as 'retail services' (or equivalent) or 'covers for mobile phones' cannot be specifically protected.

In some cases, the classification changes are proving problematic when it comes to fulfilling obligations under co-existence agreements and other forms of settlement - for example, where restrictions commonly included in specifications cannot be used (eg, it is not possible to use "but not relating to telecommunication-related services" in a specification). In such cases, discussions between parties may be necessary to agree an appropriate way forward in light of local practice.

Also noteworthy is that trademark officials in Saudi Arabia have announced that class headings offer full class protection. While this may be the practice before the Trademark Office, it does not necessarily follow that enforcement officials and the courts will take the same view.

Steering a course

One way to navigate these changes is to avoid using class headings only, unless the goods or services of interest are explicitly covered. Generally, use of class headings should be avoided, so as not to affect the scope of rights - not just for these two countries, but for all other countries in the MENA region.

Instead, rights holders should look to individual listings - or a combination of class headings and terms from the individual listing - in order to try to obtain protection for their goods or services.

Given that this classification practice has been in force for two years, some cases involving the impact of this strict classification practice, where actual goods or services have been denied coverage due to the limited terms available, might be expected.

To date, there has been no indication of MENA countries other than Iran and Saudi Arabia adopting the same classification practice.

Need for swift response

The MENA region has seen significant changes to trademark law and practice introduced at short notice. Rights holders should therefore keep in touch with local counsel and be prepared to review their strategy and respond accordingly. More developments are expected - in particular, the implementation of the Trademarks Law in the remaining Gulf Cooperation Council member states.

While change can be unsettling, it can also lead to progress. Already, rights are being granted more quickly - a key development in a region in which registration certificates are crucial for effective enforcement.

Watch this space for reports on future developments.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions