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.