Trademarks Explained: A Comprehensive Guide to Registration and Protection in Ethiopia
In the dynamic business landscape of Ethiopia, understanding the ins and outs of trademark registration and protection is crucial for safeguarding your brand. The Ethiopian Trademark Protection Proclamation no. 501/2006 serves as the cornerstone for defining and preserving trademarks, vital assets that directly shape a company’s identity. It is also good to note that Ethiopia has not so far signed major IPR treaties, such as the Paris Convention for the Protection of Industrial Property, the World Intellectual Property Organization (WIPO) copyright treaty, the Berne Convention for Literary and Artistic Works, the Madrid System for the International Registration of Marks, and the Patent Cooperation Treaty.
Definition of Trademark:
According to the Ethiopian Trademark Protection Proclamation, a trademark encompasses any visible sign that can distinguish one entity’s goods or services from another’s. This includes words, designs, letters, numerals, colors, or the shape of goods and their packaging.
Business Asset Significance:
Given their direct association with a company’s image, trademarks stand out as one of the most pivotal assets for any business. Securing your brand through proper registration becomes a strategic move in the competitive Ethiopian market.
The Road to Trademark Registration
Eligibility Requirements:
To be eligible for registration, a trademark must distinctly set apart goods or services. It can be registered in black and white or color, with specific protections corresponding to the chosen registration mode.
Inadmissible Trademarks:
Certain trademarks face inadmissibility, with stringent criteria aimed to uphold the integrity of the registration process.
Trademarks Non-Eligible:
- Trademarks consisting of sound or smell.
- Those incapable of distinguishing goods or services.
- Those contrary to public order or morality.
- Marks which are likely to mislead the public or business community.
Types of Trademarks:
1. Product Mark: Used on goods or products.
2. Service Mark: Represents a service rather than a product.
International Trademark Classification:
Trademark classification is established by the Nice Union, and the products are categorized into 45 classes under the Nice Classification. Classes 1-34 are for goods, and classes 35-45 are for services.
Duration of Trademark Registration:
A trademark registration lasts for 7 years from the application date, with the possibility of indefinite renewal in 7-year increments. Restoration and renewal can be done within 9 months after expiration.
Trade Name vs. Trademark Protection:
Registering a trade name does not protect your trademark. Commercial law and trademark law differ, and registration of a trade name does not prevent others from using a similar trademark.
Essential Steps for Trademark Registration
Documentation Requirements:
To initiate the trademark registration process in Ethiopia, specific documents are required, such as the applicant’s full name, address, and nationality, along with a certified home registration certificate. If utilizing an agent, a duly authenticated power of attorney is necessary.
Application Process:
Each application covers a single trademark, accompanied by three trademark reproductions, a list of goods and services, and proof of filing fee payment. The Ethiopian Intellectual Property Office examines the application to ensure formal and substantive compliance with legal provisions.
Publication and Opposition:
Upon acceptance, the trademark application undergoes a 60-day publication period, inviting opposition. If uncontested, the process typically takes 60 days to culminate in the issuance of a trademark registration certificate.
Cancellation and invalidation of a Trademark
A Trademark may face termination on grounds of non-use if it is substantiated that the Trademark, without a valid justification, remained unused in Ethiopia for a consecutive period of three years. In such instances, the office is empowered to revoke the Trademark registration unless the owner can establish that the nonuse was a result of force majeure.
Additionally, a Trademark’s registration can be declared invalid either through a written request from any concerned party or at the discretion of the office. This occurs when it is proven that the Trademark did not initially fulfill the conditions stipulated by the Intellectual Property Office.
Safeguarding Trademark Rights: Legal Measures
Enforcement through the Federal High Court:
The Federal High Court, with jurisdiction over trademark prosecution, plays a pivotal role in enforcing trademark rights. It can swiftly issue provisional measures to prevent infringement, including blocking the entry of goods into commerce.
Injunctions and Compensation:
In cases of trademark infringement, the court has the authority to issue injunctions to halt further infringement acts and order the defendant to compensate the claimant for damages incurred.
Criminal Sanctions for Trademark Infringement
Legal Consequences:
Intentional violation of trademark rights can lead to rigorous imprisonment for a minimum of 5 years. Similarly, negligence in violating these rights may result in imprisonment for a term not less than 1 year and not exceeding 5 years.
In exploring the intricate landscapes of trademark registration and protection in Ethiopia, businesses must adhere to legal protocols and leverage the robust legal framework to secure their brand’s integrity. Proactive measures and a thorough understanding of the process ensure a smooth journey towards obtaining and safeguarding trademark rights in the Ethiopian market.
If you have questions or comments or need representation, please don’t hesitate to get in touch with us.
