Ethiopia is a country located in the north-eastern part of Africa. It is bordered by South Sudan and the Sudan to the west, Eritrea to the north, Djibouti, and Somalia to the east and Kenya to the south. Ethiopia’s population of approximately 120 million makes it one of the largest markets in Africa. The major sources of Ethiopian imports are China, Saudi Arabia, India, UAE, Japan, Italy, Turkey, and United States.
Which Products are vulnerable?
Products from the countries of major sources of Ethiopian import, like China, Saudi Arabia, India, UAE, Japan, Italy, Turkey, and United States are vulnerable. Products which acquire reputation and acceptance in the market are the ones relatively under high exposure to counterfeit. Trademark infringers usually target these products to exploit their comparative market advantage and higher profit margin due to the cheap counterfeit products.
Usually trademark infringers do not produce the counterfeit product locally in Ethiopia. Rather they import such products from Asian countries like China, India…etc. the current trend shows that famous brands are targeted and counterfeited by trademark infringers. Such infringers even import the counterfeited products from the same country of the original product.
Although, well-known brand products are being imported and distributed in Ethiopia once these genuine products get acceptance and reputation, fake products with the same trademark/brand flood into the market in massive scale. For instances we can take the cases of MAMCO Paper Products P.L.C. in relation to counterfeit paper products of MAMCO which is the sister company of MIDROC.[1]
Also, in another instance, we may see the case of Nequr Brothers Company Limited claims of counterfeit product imported from abroad. We may list several cases in relation to counterfeit goods, drugs, machineries, etc. Much of these fake products are imported with the intention of convincing the consumer that they are purchasing brand name items at much cheaper prices. As a result, it has become difficult to identify the genuine product from the fake ones. In terms of quality the forged product has poor quality; yet people do not identify the quality so easily and usually creates confusion on the market.
Legal structure protecting trademarks in Ethiopia
The legal structure regarding the protection of trademarks in Ethiopia is dealt under Trademark Registration and Protection Proclamation no 501/2006 and Regulation no. 273/2012.
Ethiopia is a member of the World Intellectual Property Organization (WIPO) while it has not signed standard setting treaties such as the Paris convention. Yet, the trademark proclamation safeguards the rights of owners of registered trademarks. Also, the law seems to protect well-known trademarks under an international convention. According to the law, well known marks are entitled to protection under international convention where Ethiopia is a party, where the following conditions are met.
- The mark is well known in Ethiopia and
- The owner of the mark is the national of the state party to the convention, or
- Domiciled in or has a real and effective industrial or commercial establishment in a state party to the convention.
However, it is difficult to objectively determine which brand is well-known to avail from such protection.
So, the recommended and reliable approach to protect your trademark in Ethiopia is registering your trademark at the Ethiopian Intellectual Property Office. We highly recommend you register and protect your brand in Ethiopia thereby preserving your ownership right in Ethiopian jurisdiction and keeping out “fake” products from entering the Ethiopian jurisdiction.
Enforcement of rights: Penalties and Redress
If your trademark is registered in Ethiopia and your trademark/brand is infringed, you have the following remedies.
- Administrative and legal measure of injunction against the importation of infringement products
- Compensation for the damages sustained.
- Criminal Sanction on the infringers
The owner (holder) of a certain trademark have the right to get provisional measures from the competent court. Such measures include:
- preventing the entry into the channels of commerce of import and export goods after completing customs formalities.
- 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 Authority based on any relevant evidence presented by the trademark right holder may seize and destroy goods which are subject to the alleged infringement of the applicant’s right.
In addition to the above mentioned provisional administrative measure, the trademark owner can request compensation for the damage incurred. Accordingly, the court shall award damages to the plaintiff upon ascertaining that there was an infringement of his rights. Such amount shall be equal to the net profit derived by the defendant from the use of the trademark or the amount of royalty the defendant would have paid had he been a licensee to such a trademark whichever is the higher amount.
Further the trademark holder can institute a criminal proceeding on the infringers. As per Ethiopian law “a person who intentionally violates a right protected under the Ethiopia intellectual property office will be punished with rigorous imprisonment of a term not less than 5 years and not more than 10 years. A person who violates a registered Trademark by gross negligence will be punished with gregarious improvement of a term not less than 1 year and not more than 5 years.”
Finally, once again, we highly recommend you register and protect your brand in Ethiopia thereby preserving your ownership right in Ethiopian jurisdiction and keeping out “fake” products from entering your market share in Ethiopian jurisdiction.
If you have an additional question or comment or need to get a practical legal support in this regard please Contact us.
[1] MIDROC-Mohammed International Development Research and Organization Companies is a company owned by Sheik Mohammed Hussein Al Amoudi. It has operations in Europe, the Middle East, and Africa.
“Copyright © 2003-2020 Fikadu Asfaw and Associate Law Office”
Related notes
- Have You Heard About The Newly Issued Trademark Law Of Ethiopia?
- Why do you need to protect your Trademark in Ethiopia?
- Trademarks and their protection as per the Ethiopian legal system
- Enforcement of Registered Trademark Rights under Ethiopian law
- Well known trademarks and Ethiopian law
- Trademark Registration Procedures under Ethiopian Law
- How to Protect Patent under Ethiopian Law: a legal brief on the Inventions, Minor Inventions and Industrial Designs Proclamation of Ethiopia
Note: This guide provides vital information on Ethiopian trademark law and practice and is not intended to substitute professional advice given with full knowledge of the specific circumstances of each case and proficiency in the law of Ethiopia such as might be provided by a trademark Attorney or trademark Agent in Ethiopia.
