Trademark, as defined by the Ethiopian Trademark Proclamation, is any visible sign that is capable of distinguishing goods or services of a person from other persons. It may include words, designs, letters, numbers, colors or the shape of goods or their packaging on it or it may include the combination of both.
The need for the protection of Trademarks arose because it was found to be necessary to protect the reputation and good will of businesses persons engaged in manufacturing and distribution of goods. Trademarks also play an important role in guiding customers’ choice and protecting their interests. It is also believed that protection of Trademarks could have positive impact on the national economic advancement and especially on the trade and industrial development of the country.
Who can register a Trademark?
Any individual, association or any legal person involved in the production, distribution of goods and services can apply for registration of a Trademark if they fulfill the requirements set under the Trademark registration and protection proclamation.
Foreign applicants can also register a Trademark through an agent living in Ethiopia.
Trademarks eligible for registration
Any Trademark that is capable of clearly distinguishing goods or services of a person from another person is eligible for registration. This Trademark may also include elements not subject to protection unless they decrease the distinctive character of the Trademark.
A Trademark can be registered in black and white or in color. A Trademark will be given protection in all color combinations only if it is registered in black and white. Trademark registered in color will only be protected in the color combination is which it is registered.
Inadmissible Trademarks for Registration
The following trademarks cannot be eligible for registration.
– A Trademark which is incapable of distinguishing the goods or services of one person from those other persons.
– A Trademark which consists of sound or smell.
– A Trademark consisting of signs which designate the kind, quality, quantity intended purpose, value, geographical origin of goods or services the time of production of the goods or services or other characters of the goods or services.
– A Trademark contrary to public order or morality.
– A Trademark consisting exclusively of signs or indicators which have become customary in the current language use on in dynamic and business activities.
– A Trademark that consists of the full name of a living person without ones consent.
– Unless authorized by a competent authority, a trade works which is identical with or an imitation of a flag or emblem, or abbreviation of initials of the name of a known organization.
– A Trademark that’s likely to mislead the public or the business community relating to the geographical origin of the goods or services concerned or their nature.
So, a Trademark consisting of one of the above can’t be registered.
A person before starting the application process can, after paying the required payment may request a search whether a given Trademark have already been registered or not.
Procedures for registration of trademark
If you want to register for a Trademark, you need to follow the following procedures.
– Take the prescribed form from the office, fill two forms and apply for registration upon payment of the application fee.
– Along with the application, three copies of the reproduction of the Trademark with A4 papers, one with 8 cm by 8 cm and the rest with 4 cm by 4 cm. The Trademark needs to be clearly shown.
– Unless the Trademark comes with a color, it should be clearly presented with white and black.
– If you are planning to apply for registration through an agent, a duly authenticated power of attorney is necessary. If you are a foreigner the agent appointed must be domiciled in Ethiopia.
Examination of Application
The office, after accepting your application will undertake examination whether you have undergone the proper procedures for registration. If it ascertains that the proper procedure is followed then it will undergo a substantive examination i.e. if the Trademark is legible for registration.
The office will reject the application if it ascertains that the application doesn’t fulfill the requirements as to form and substance. But it should inform the applicant in writing the reasons for the rejection.
But if the requirements set are fulfilled, the office will publish a notice of invitation for apposition regarding the registration of the Trademark in the news paper at the cost of the applicant. If the request for registration hasn’t been opposed, the office will then register a Trademark and issue to the applicant a certificate of registration up on the payment of the required fee.
Opposition of a Trademark
Any person has a right to object the registration of a Trademark provided that he has adequate supporting evidence to that effect the office will examine the evidences presented by the objecting party and decided whether the presented Trademark is legible for registration or not.
If the office finds the opposition to be acceptable the application will be rejected. Anybody aggrieved by the final decision of the office on the registration of a Trademark has the right to appeal to the court having jurisdiction.
Duration and renewal of registration of Trademarks
The registration of a Trademark will remain valid for a period of seven years from the date of submission of the application for registration. But the registration may be renewed for a consecutive period of seven years.
The renewal for registration has to be made within three months of the expiry of the registration period; it could also be renewed within six months period by paying in addition to the regular renewal fee, a penalty prescribed by the office.
A Trademark not renewed within the above time limit will be considered to have been waived or cancelled.
Rights conferred by registration
Though using a Trademark for a long period of time without registration will give one a right of ownership of a Trademark, it will be extremely difficult to get decisions on ownership feuds. But if you are a registered owner you will have a right to
– Use the Trademark or authorize any other person to use the Trademark in relation to any goods or services for which it has been registers.
– Preclude others from 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 to respect of which the Trademark is registered.
– Easily register the Trademark in other countries.
It could also serve as evidence in any case regarding the Trademark.
Cancellation and invalidation of a Trademark
A Trademark will be considered of non-use if it is proved that the Trademark has not, without legitimate reason, been used in Ethiopia during a continuous period of three years. In such cases the office will cancel the registration of the Trademark unless the owner proves that the nonuse of the Trademark was due to force majure.
The registration of a Trademark will be invalidated, by a written request of any interested person or by the office when it is proved not to have initially fulfilled the conditions set by the office of intellectual property.
Enforcement of rights
If you have a registered Trademark you have the right to compel the competent court to order effective provision measures to:
– In accordance with civil and criminal procedure laws, prevent the entry into the channels of commerce of impart 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.
Criminal Sanctions
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.
The costumes authority on the basis of any relevant evidence presented by the right holder may size and design goods which are subject to the alleged infringement of the applicant’s right.
If a company uses its company name along with its trade name on its products for a long time, if can acquire a Trademark on the names it has been using. So, in order to acquire a Trademark right on a certain product companies have to either register the name following the proper procedures or the can use the name along with the products.
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Any pertinent information about investment in Ethiopia, tax in Ethiopia, can be available from an Ethiopian Lawyer, Ethiopian Trademark Lawyer, Ethiopian Investment Lawyer, Ethiopian Tax lawyer, Ethiopian Employment Lawyer, Ethiopian Labour Relationships Lawyer, Ethiopian Immigration lawyer.
