Ethiopia is a countrylocated in the north-eastern part of Africa. It is bordered by South Sudan andthe Sudan to the west, Eritrea to the north, Djibouti and Somalia to the eastand Kenya to the south. Ethiopia's population of approximately 84 million makesit one of the largest markets in Africa. The major sources of Ethiopian importsare China, Saudi Arabia, India, UAE, Japan, Italy, Turkey, and United States. 

Which Products arevulnerable?

Products from thecountries of major sources of Ethiopian import, like China, Saudi Arabia,India, UAE, Japan, Italy, Turkey, and United States are vulnerable. So productswhich acquired reputation and acceptance in the market are the ones relativelyunder high exposure to counterfeit. Trademark infringers usually target theseproducts to exploit their comparative market advantage and higher profit margindue to the cheap counterfeit products. So the usual approach of the trademarkinfringers is not producing it in Ethiopia; rather importing it from Asiancountries like China, India…etc. Even famous brands of a Chinese/Indian companycan be counterfeited by other trademark infringers from the same country and beimported in Ethiopia.

Although, well-knownbrand products are being imported and distributed in Ethiopia once thesegenuine products get acceptance and reputation, fake products with the sametrademark/brand flood into the market in massive scale. For instances we cantake the few examples of the American Energy Management Company (APC) claims ofprevalence of counterfeit UPS (Uninterruptible Power Supply) products thatcarry APC’s Brand.

We can also see the case of “fake cosmetics Industry in Ethiopia.Much of these fake products are imported with the intention of convincing theconsumer that they are purchasing brand name items at much cheaper prices. As aresult it has become very difficult to identify the genuine product from thefake ones. In terms of quality the forged product has very poor quality; yet peopledo not identify the quality so easily and usually creates confusion on themarket.

Legal structureprotecting trademarks in Ethiopia

The legal structureprotecting Trade marks in Ethiopia is based on Proclamation no 501/2006 onTrade Mark Registration and Protection and Regulation no 273/2012. Ethiopia isnot a member of the WIPO standard setting treaties such as the Parisconvention. However the proclamation seems to protect well-known trade markunder an international convention. Even though the trademark proclamationexpressly provides that a trade mark which is entitled to protection as awell-known trade mark under an international convention of which Ethiopia is aparty, shall be protected if it is also well known in Ethiopia, it will bedifficult to objectively determine which brand is known enough to avail fromsuch protection.

So the recommendedand reliable approach to protect your trademark in Ethiopia is registering yourtrademark at the Ethiopian Intellectual Property Office. Thus we highly recommendyou to register and protect your brand in Ethiopia thereby preserving yourownership right in Ethiopian jurisdiction and keeping out “fake” products fromentering the Ethiopian jurisdiction.

Enforcement ofrights:  Penalties and Redress

If your trademark isregistered in Ethiopia and your trademark/brand is infringed, you have a

1. right to get an administrative and legal measure of injunction against the importation of infringement products
2. a right to request for Compensation for the damages sustained;
3. a right to request for Criminal Sanction on the infringers

Such trademark holdershall have the right to compel the competent court to order effectiveprovisional measures:  

1. In accordance with civil and criminal procedure laws, to prevent the entry into the channels of commerce of import and export goods after completing customs formalities. 
2. Pass an injection to the defendant to stop the infringement of right and order to pay compensation to the damage infliction on the person having the registered trademark.

The Customs Authorityon the basis of any relevant evidence presented by the trademark right holdermay seize and destroy goods which are subject to the alleged infringement ofthe applicant’s right.  

In addition to theabove mentioned provisional administrative measure, the trademark owner canrequest compensation for the damage incurred. Accordingly the court shall awarddamages to the plaintiff upon ascertaining that there was an infringement ofhis rights. Such amount shall be equal to the net profit derived by thedefendant from the use of the trademark or the amount of royalty the defendantwould have paid had he been a licensee to such a trademark whichever is thehigher amount.

Further the trademarkholder can institute a criminal proceeding on the infringers. As per Ethiopianlaw “A person who intentionally violates a right protected under the Ethiopiaintellectual property office will be punished with rigorous imprisonment of aterm not less than 5 years and not more than 10 years. A person who violates aregistered Trademark by gross negligence will be punished with gregariousimprovement of a term not less than 1 year and not more than 5 years.”

Finally, once again,we highly recommend you to register and protect your brand in Ethiopia therebypreserving your ownership right in Ethiopian jurisdiction and keeping out“fake” products from entering your market share in Ethiopian jurisdiction.

If you have anadditional question or comment or need to get a practical legal support in thisregard please  Contact us.

“Copyright ©2003-2013 FikaduAsfaw and Associate Law Office”

Related notes

Ø HaveYou Heard About The Newly Issued Trademark Law Of Ethiopia?

Ø Whydo you need to protect your Trademark in Ethiopia? 

Ø Trademarksand their protection as per the Ethiopian legal system

Ø Enforcementof Registered Trademark Rights under Ethiopian law

Ø Wellknown trademarks and Ethiopian law

Ø TrademarkRegistration Procedures under Ethiopian Law

Ø Howto Protect Patent under Ethiopian Law: a legal brief on the Inventions, MinorInventions and Industrial Designs Proclamation of Ethiopia

Note: This guide provides vital information on Ethiopian trademarklaw and practice and is not intended to substitute professional advice givenwith full knowledge of the specific circumstances of each case and proficiencyin the law of Ethiopia such as might be provided by a trademark Attorney ortrademark Agent in Ethiopia.