Ethiopian law on Trademark Rights and Licensing

In this article, we’ll discuss about the rights granted through registration and examine the legal dimensions surrounding the restriction of rights granted by registration, the transfer of rights, limitations on rights, license contracts, as well as the nullity and invalidity of such contracts.

Rights Conferred by Registration

Usage and Authorization: The owner of a registered trademark enjoys the right to use it or authorize others to use it for the registered goods or services.

Preclusion Rights: Registration empowers the owner to prevent others from:

  1. Using a similar mark likely to mislead the public.
  2. Using the mark without just cause and in ways harmful to the owner’s interests.
  3. Engaging in other similar acts.

Presumed Likelihood of Confusion: In case of identical signs for identical goods or services, a likelihood of confusion is presumed.

Limitation of Rights Conferred by Registration

Goods Lawfully Sold: Registration doesn’t prevent third parties from using the trademark for goods lawfully sold under that trademark in any country, provided there’s no alteration.

Bona Fide Use: Owners cannot prevent third parties from using their names, addresses, etc., for bona fide identification purposes that don’t mislead the public.

Transfer of Right

Assignable Rights: Trademark rights can be assigned or licensed, either wholly or partially.

Transfer Request: A written request for transfer, accompanied by the agreement, must be submitted to the office.

Co-ownership Consideration: Co-owners must consent to transfer shares in a trademark.

Transfer in Connection with Business: Trademark rights can be transferred with or without the associated business, with the right attached to the business unless otherwise agreed.

Office’s Discretion: The office may refuse a transfer if it believes it may mislead the public.

Registration and Publication: After examination and payment of the prescribed fee, the office registers and publishes the transfer.

License Contracts

Granting License: Owners can grant licenses in writing for all or part of the goods or services associated with the trademark.

Submission to the Office: License contracts, modifications, and terminations must be submitted to the office for registration and confidential publication.

Effectiveness: License contracts have no effect against third parties until registered.

Nullity of License Contracts

License contracts lacking effective control by the licensor over goods or services’ quality are null and void.

Invalid Clauses of License Contracts

Null and Void Clauses: Clauses imposing unnecessary restrictions beyond the rights conferred by registration are null and void.

Exceptions: Certain limitations, justified control, and obligations for safeguarding trademark validity are not considered restrictions.

Right to Grant Further Licenses

Granting Further Licenses: Unless specified otherwise, the initial license does not prevent the owner from granting further licenses or using the trademark.

Exclusive License Conditions: If an exclusive license is granted, the owner may not grant further licenses or use the trademark unless the contract states otherwise.

Right of Licensee

Unless the contract specifies otherwise, the licensee has the right to use the trademark throughout the registration’s duration, including renewals, for all registered goods or services.

If you have questions or comments or need representation, please don’t hesitate to get in touch with us.