According to Ethiopian Trade Mark Protection Proclamation no. 501/2006 Trademark can be defined as any visible sign capable of distinguishing goods or services of one person from those of other persons, it includes words designs, letters, numerals, colors or the shape of goods or their packaging or the combination of thereof.
Since Trademarks are directly associated with the images of a company they constitute one of most important assets of any business.
Registration of Trademark in Ethiopia
1. Requirements of Eligibility
Any trademark that is capable of clearly distinguishing goods or services of a person from those of other persons shall be eligible for registration. A trademark may be registered in black and white or color. A trademark, which is registered in black and white, shall be protected in al color combination, a trademark, which is registered in color, shall only be protected in the color combination in which it is registered.
2. In admissible trademarks under Ethiopian law
The following trademarks may not be admissible for registration,
- A trademark which consists of sound or smell;
- A trademark which is incapable of distinguishing the goods or services of one person from those of other person,
- A trademark that is contrary to public order/morality,
- A trademark consisting exclusively of sings or indications which designated the kind quality quantity intended purpose, value, geographical origin of goods or services the time of production of the goods or rendering of the services, or other characteristics of the goods or services
- A trademark that consists exclusively the surname of the applicant
- A trademark that consists exclusively the full name of an alike individual without his consent.
- Unless authorized by a competent authority, a trademark which is identical with or an imitation of or contains an armorial bearing flag or the emblem, a name or abbreviation or initials of the name of or official sign or hall mark adopted by any state, intergovernmental organization, or other organization created by international conventions
- A trademark that is likely to mislead the public or the business community in particular as regards the geographical origin of the goods or services concerned, or therein nature or characteristics,
- A trademark consisting exclusively of a shape which results from the nature of the good itself or that is necessary to obtain technical result of the good or that gives substantial value to the good
The Requirements for Trade mark Registration in Ethiopia
Required documents for trade mark application in Ethiopia are,
- Full name address and nationality of the applicant(s)
- Home registration certificate certified up to Ethiopian consular level,
- When the application for registration is filled through an agent, it shall be accompanied by a duly authenticated power of attorney certified up to Ethiopian consular level.
- Three copies of reproduction of the trademark,
- A list of goods & services classified in accordance with the International Classification Of Goods & Services for which registration of the mark is requested and the class numbers of the classification,
- A document certifying payments of the filing fee
- An application for registration shall cover only one trademark;
An application for registration shall cover only one trademark. However the application may contain a list of goods & services classified in accordance with The International Classification of Goods and Services 8th Edition.
The Ethiopian Intellectual Property Office makes examination as to form and substance to ensure that the trademark compiles with the provisions of the proclamation.
When the office finds that the trademark application is acceptable, it shall publish a notice of invitation for opposition regarding the registration of the trademark in the intellectual property gazelle or a news paper having a nation wide circulation of the cost of the applicant. This may further be supplemented by a radio or television broad cast or a website notice as seemed necessary. The period of publication is for 30 days. If no opposition is filed against the application or there is not office action against it the process may take 45-60 days.
Priority rights of the Applicant according to the Ethiopian Trade Mark Proclamation
Where any applicant files his application in Ethiopia, Within six monthly from the date on which he first filed in a foreign country, an application for the same trademark in respect of same goods or services, the date on which the application was first filed in the foreign country shall be regarded as the date of filing if the applicant claims the right of priority and furnishes within the prescribed time limit a copy of the earlier application certified as correct by the office with which it was filed and other documents and information as prescribed.
After an application is published and until the registration of the trademark the applicant has the same privileges and rights as he/she could have if the trademark had been registered validity effect from the date of application.
Duration and Renewal of Trademark Registration in Ethiopia
Duration and Renewal of trademark
According to the Ethiopian Trade mark Proclamation, the registration of a trademark shall remain valid for a period of seven years from the date of submission of the application. However, a trademark registration in practice is valid for a period of 6 years.
Renewal of trademark registration
This may be done upon request of the owner, for consecutive periods of seven years. The owner of the trademark shall attach a document showing the payment of renewal fee prescribed by the regulation. At the time of the renewal, no change maybe made in the trademark or in the list of goods or services in respect of which the trademark is registered, except that certain goods or services may be eliminated from the list.
Renewal of the registration of a trademark shall be made within three months after the expiry of the registration period, provided however, that after the expiry of the three months, period, the registration may be renewed within the next six months by paying, in addition to the regular renewal fee, a penalty prescribed by the regulations.
A trademark not renewed within the above stated time limit shall be considered to have been waived or cancelled.
Transfer of Trade Mark under Ethiopian Legal System
A right on a registered trademark or an application for registration of a trade mark may be assigned or licensed in whole in part shares. A trademark, which is a subject of co-ownership, may not be transferred without the consent of all the co-owners.
The right to a trademark can be transferred in or without connection with the business in which it issued. In case where there is a transfer of the business the right to the trademark that is attached to the business passé over to the new owner, unless otherwise agreed.
Rights Conferred By Registration of Trademark; Their Renunciation and Invalidation under Ethiopian Law
Rights Conferred By Registration of Trademark;
- The owner of a registered trademark shall have the right to use or authorize any other person to use the trademark in relation to any goods or services for which it has been registered. The owner has the right to preclude others from the following acts. Any use of a trademark or a sign resembling it in such a way as to be likely to mislead the public for goods or services in respect of which the trademark is registered or for other goods or services in connection with which the use of the mark or sign is likely to mislead the public.
- Any use of a trademark or a sing resembling it, without just cause and in conditions likely to be prejudicial to his interest.
Renunciation of right of a registered trademark
The owner of a registered trademark, who wishes to renounce the registration either wholly or in respect of part of the goods or services, for which the trademark is registered, may submit his application to the Ethiopian Intellectual property office for the cancellation of the Registration of the trademark.
Any interested person may submit a request in writing for the cancellation of the registration of a trademark to the Ethiopian intellectual property office on the ground that the trademark has not been in use. A trademark shall be considered on non use, when it is proved that the trademark has not without legitimate reason, been used in Ethiopia during a continuous period of at least three year preceding the date of the request for the cancellation of the trademark, by the registered owner or a licensee in respect of any of the goods or services for which it was registered.
Invalidation of Registration
The registration of a trademark may be invalidated, by a written request of any interested person or by the initiative of the Ethiopian intellectual property office itself, when it is proved not to have initially fulfilled the conditions of the law
Effects of Invalidation
The decision declaring the invalidation of registration of a trademark shall be effective as of the dated of such registration. The office shall publish the invalidation of the registration in an intellectual property gazette or a newspaper having nationwide circulation.
Enforcement of Trade Mark Rights under Ethiopian Law
Under the Ethiopian legal system the court, which has jurisdiction on trademark prosecution, is the federal high court. It shall order prompt and effective provisional measures to
- Prevent an infringement of trade mark right from occurring in particular to prevent the entry into the channels of commerce of import and export goods after completing customs formalities or
- Present relevant evidence in regard to an alleged infringement of a right
The court after hearing a case of infringement of a trademark owner’s right is entitled to
- Pass an injunction to stop the defendant from continuing the act of infringement and
- Order the defendant to compensate the damage inflicted to the claimant due to the infringement.
Criminal sanctions for trademark infringement
Whosoever intentionally violates a right protected under this proclamation shall be punished with rigorous imprisonment of a term of not less than 5 years and not more the layers Moreover, whosoever by negligence violated a right protected under this Proclamation shall be punished with rigorous imprisonment of a term not less than 1 year and not more than 5 years.
Fikadu Asfaw practices law in Addis Ababa, Ethiopia and is a member of the LawGuru Attorney Network.