Are you a trademark owner, trademark agent, Trademark Lawyer …etc, that has trademark registration related interest in Ethiopia? If so, weassume you should read this.  

In Ethiopia Trademark registration process is undergoing afundamental revision process. As part of this process a New TrademarkRegulations is published in Ethiopia on 24 December 2012, followed by theissuance of detailed directive by the Ethiopian Intellectual Property Office.

According to this newlaw, owners of Trademarks that are already registered in Ethiopia willmandatorily be required to file new applications within 18 months of thepublication date, which is by no means no later than June 24, 2014. These newapplications will not be registered automatically but will be subject toexamination on absolute and relative grounds.

Generally the salient features of the new Trademark Law are listed below

1.       Priority Claim

Claim of priority, based upon an earlier-filed foreignapplication, is possible. Here applicants who have registered their marks priorto the coming of the 2006 proclamation will enjoy the priority right toregister their marks earlier than others.

The priority ofcountries adopting the Paris Convention will be recognized.

2.      Type of Application

Unlike the previous practice, a single application may includeseveral classes but it should be noted that there is a 50% additionalapplication fee for every additional class related activity, at every road ofthe registration process.

3.      Protection Term

Unlike the previous practice, Trademark registrations are validfor seven years from filing date and are renewable for like period. Unlike theformer practice there is no difference in treatment between local and foreignapplication. So payment and protection period is standardized for local andforeign trademarks.

There is a grace period of six months for late renewals withpayment of a surcharge.

There is still muchuncertainty about the status of existing registrations and applications filedbefore 24 December 2012. It has been said that existing registrations can nolonger be renewed and must be re-filed under the new law. There is a"sunrise period" of 18 months enabling owners of existingregistrations to do this. But in general theprocedures for registration as stipulated under the new regulation are asfollows.

Application for Registration of Trademark

Application for registration of a trademark can be made to theIntellectual Property office, if the applicant presents the followingdocuments.

1.       If the applicant is the legal person copy of either theCertificate of Registration or the Business License (Certificate ofIncorporation) of the legal person.

2.      If the applicant is filed through a legal agent, a dulyauthenticated power of attorney has to be present in addition to theregistration certificate.

3.      A brief description of picture if the trademark is pictorial orincludes pictorial elements.

4.      Where the Trademark contains characters other than Amharic orLatin, or numerical expressions other than Amharic, Arabic or Latin numeralstheir transliteration in to Amharic or Latin or characters and Arabic numbers;

5.      If the applicant claims a combination of colors as a trademark ordistinctive feature of the trademark color and the explanation that theapplicant claims a combination of color as the trademark or as a distinctivefeature, which includes a description of opposition of appearance of each colorin the trademark.

Examination of application

The office will then undertake a formality and substantiveexamination of the application.

1.       Formality Examination

Here the office will check whether the application fulfills allthe formal requirements (Whether all the documents have been presented).

If the applicant doesn’t fulfill the technical requirements theoffice will notify the applicant within 90 days to file for the necessarycorrection.

The applicant has to make the required correction and submit it tothe office upon payment of the required fee.

2.      Substantive Examination

Here a more extensive examination is conducted by the office. TheIntellectual Property Office Checks, among other things, whether theapplication is in compliance with the requirements of the TrademarkProclamation.

Opposition to registration of a trademark

If and when the Intellectual Property Office determines that thetrademark applied for is eligible, then the office shall publish, at theexpense of the applicant, a notice for call of opposition to the registrationthe trademark.

Any person who intends to oppose the registration of a trademarkmay submit his statement of opposition. This statement of opposition has to besubmitted within 60 days from the date of publication of the notice for call ofopposition.

Registration procedure

If no opposition is filed or is successful the office will sendnotice to the applicant, stating the eligibility of the trademark. Unlike theprevious registration system, under this re-registration, trademarks will beextended for a seven year period.

The Mandatory Amendment registration and relinquishment oftrademarks

According to the newlaw, owners of Trademarks that are already registered in Ethiopia willmandatorily be required to file new applications within 18 months time of thepublication date of the law, which is by no means is no later than June 24,2014. As mentioned above these new applications will not be registeredautomatically but will be subject to examination on absolute and relativegrounds. An application to renew a trademark should be made within suchappropriate time. If not the trademark shall be deemed relinquished.

In such cases of amendment/refilling, the trademarks will not getany extension/ additional time due to the amendment. The trademark will bevalid until the time stipulated in the original trademark expires only. Inother words the mandatory amendment process is only for technical amendments onthe previous registration and no extension period will granted.

Applications for re-registration have to be presented to theIntellectual Property Office within a year and half period of time andtrademark certificates will be issued two month after publication in the newspaper.

If you have anyquestion or comment or need to get a practical legal support in this regardplease Contactus.

Any pertinentinformation about trade mark registration and protection can be available fromany Ethiopian Lawyer, Ethiopian Trademark Lawyer, Ethiopian Copyright Lawyer orEthiopian Intellectual Property Lawyer.