By Benjamin Choi, Managing Director
To brand owners it is a super bonus (or a nice surprise) to be able to designate the United Arab Emirates under the WIPO International Registration of Trade Mark and this is happening right after the Christmas holidays on 28 Dec 2021.
The UAE is for sure one of the most expensive countries to obtain a local national trade mark registration even assuming the application process is straightforward. In general, the minimum cost of registering one trade mark in the UAE can be 3 times the usual cost of registering one trade mark in Hong Kong. Overseas applicants also need to pay extra costs to have the formality documents notarized and legalized at the local UAE embassy office to comply with the local requirements. From 28 Dec onwards, brand owners qualified will definitely apply to register in the UAE through the IR designation to save time and costs, and can forget about running around to notarize and legalize the supporting documents.
A few tips for brand owners
- The designation in the UAE will likewise be subject to substantive examination by the UAE local Trade Marks Office on inherent registrability and clearance of prior similar mark in the same standard as currently applied to a local UAE application. Simple and standard descriptions of goods and services will therefore be helpful to reduce the chances of requisition. Pre-designation clearance search of the mark is also recommended to anticipate the likelihood of prior similar mark obstacle in the examination process.
- There are specific rules in the UAE derived from local culture such as a trade mark cannot be registered for wine and alcoholic beverages in Class 33 and bar services in Class 43. These items should be avoided in the basic application for designation in the UAE.
- The time for responding to an official requisition raised by the UAE and forwarded through WIPO will be tight so it is advisable to have a local agent lined up and properly authorized to represent the Applicant to resolve any requisition or obstacle.
Hong Kong is expecting the launch of the Madrid system in the first quarter of 2023 if not earlier and for those who are interested to develop the UAE market the Madrid system can help registering the trade mark in the UAE in a much more cost effective way.