This rise in prices is worrying for professionals in the Middle East, who forecast a decrease in the number of trademark filings by foreign companies.
A significant rise in prices
The initial changes appeared in the United Arab Emirates in July 2015. Six months later, Kuwait made a similar move, except that the rise in price is even more significant. More recently, Bahrain and Syria increased their prices for the formalities required to complete the registration of a trademark.
In addition to the prices, one should also consider a special feature of these Middle-Eastearn countries: a trademark application is only possible for one class of goods or services. Thus, if a trademark covers several classes, a separate trademark application has to be filed for each class and each trademark filing must be paid for.
Furthermore, the procedure for filing an international trademark is complex in the Middle East. Applications usually have to be accompanied by several supporting documents such as a power of attorney or documents in support of a priority trademark claim. The strict submission timelines must also be adhered to in order to avoid the application for trademark registration being refused. Finally, accompanying documents will usually require notarisation or legalisation. The formalities can take several weeks to process.
Why such an increase?
The Gulf states are now amongst the countries with the highest trademark filing fees. Trademark fees had not increased for the past ten years. No official reason has been issued to justify this change. However, developing countries need to improve their domestic services. Thus the new fees could be attributed to the fact that these services have been digitised, making it possible to make online applications and to grant access to all to specialised databases.
Another reason could be the coming into effect of a regional trademark law in the Gulf Cooperation Council States. Published in 2006 and revised in 2013, it is still to be reviewed and should be enacted in 2016. The new law would give way to unifying laws in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. It does not provide for a single registration (to get the “GCC mark”, registering a trademark in all six GCC states will still require filing six separate national trademark applications). However, there may be opportunities to file multi-class applications, which would compensate for the rise in prices in these countries. The Law would thus help modernise and improve the trademark registration and protection system in GCC states.
Still, these increases could result in far-reaching consequences for corporations as well as for local industrial property firms holding trademarks, who might witness a decline in their revenue if trademark holders no longer file trademark applications, especially in these countries.
However, there is one option left for international trademark holders to avoid payment of the new fees. In Bahrain, Oman and Syria, one can opt for the Madrid System which allows for the filing of one application, in one language by paying one set of fees for the 97 member states. Unfortunately, this is not possible for the other countries mentioned because while they are parties to the WIPO Convention, they are not parties to the Madrid System.
A company must strategically manage its trademark portfolio. Dreyfus & associés aims to assist you by selecting the best approach to enhance and protect your rights.