Are you a trademark owner, trademark agent, Trademark Lawyer … etc, that has trademark registration related interest in Ethiopia? If so, we assume you should read this.
In Ethiopia Trademark registration process is undergoing a fundamental revision process. As part of this process a New Trademark Regulations is published in Ethiopia on 24 December 2012, followed by the issuance of detailed directive by the Ethiopian Intellectual Property Office.
According to this new law, owners of Trademarks that are already registered in Ethiopia will mandatorily be required to file new applications within 18 months of the publication date, which is by no means no later than June 24, 2014. These new applications will not be registered automatically but will be subject to examination on absolute and relative grounds.
Generally the salient features of the new Trademark Law are listed below
1. Priority Claim
Claim of priority, based upon an earlier-filed foreign application, is possible. Here applicants who have registered their marks prior to the coming of the 2006 proclamation will enjoy the priority right to register their marks earlier than others.
The priority of countries adopting the Paris Convention will be recognized.
2. Type of Application
Unlike the previous practice, a single application may include several classes but it should be noted that there is a 50% additional application fee for every additional class related activity, at every road of the registration process.
3. Protection Term
Unlike the previous practice, Trademark registrations are valid for seven years from filing date and are renewable for like period. Unlike the former practice there is no difference in treatment between local and foreign application. So payment and protection period is standardized for local and foreign trademarks.
There is a grace period of six months for late renewals with payment of a surcharge.
There is still much uncertainty about the status of existing registrations and applications filed before 24 December 2012. It has been said that existing registrations can no longer be renewed and must be re-filed under the new law. There is a “sunrise period” of 18 months enabling owners of existing registrations to do this. But in general the procedures for registration as stipulated under the new regulation are as follows.
Application for Registration of Trademark
Application for registration of a trademark can be made to the Intellectual Property office, if the applicant presents the following documents.
1. If the applicant is the legal person copy of either the Certificate of Registration or the Business License (Certificate of Incorporation) of the legal person.
2. If the applicant is filed through a legal agent, a duly authenticated power of attorney has to be present in addition to the registration certificate.
3. A brief description of picture if the trademark is pictorial or includes pictorial elements.
4. Where the Trademark contains characters other than Amharic or Latin, or numerical expressions other than Amharic, Arabic or Latin numerals their transliteration in to Amharic or Latin or characters and Arabic numbers;
5. If the applicant claims a combination of colors as a trademark or distinctive feature of the trademark color and the explanation that the applicant claims a combination of color as the trademark or as a distinctive feature, which includes a description of opposition of appearance of each color in the trademark.
Examination of application
The office will then undertake a formality and substantive examination of the application.
1. Formality Examination
Here the office will check whether the application fulfills all the formal requirements (Whether all the documents have been presented).
If the applicant doesn’t fulfill the technical requirements the office will notify the applicant within 90 days to file for the necessary correction.
The applicant has to make the required correction and submit it to the office upon payment of the required fee.
2. Substantive Examination
Here a more extensive examination is conducted by the office. The Intellectual Property Office Checks, among other things, whether the application is in compliance with the requirements of the Trademark Proclamation.
Opposition to registration of a trademark
If and when the Intellectual Property Office determines that the trademark applied for is eligible, then the office shall publish, at the expense of the applicant, a notice for call of opposition to the registration the trademark.
Any person who intends to oppose the registration of a trademark may submit his statement of opposition. This statement of opposition has to be submitted within 60 days from the date of publication of the notice for call of opposition.
If no opposition is filed or is successful the office will send notice to the applicant, stating the eligibility of the trademark. Unlike the previous registration system, under this re-registration, trademarks will be extended for a seven year period.
The Mandatory Amendment registration and relinquishment of trademarks
According to the new law, owners of Trademarks that are already registered in Ethiopia will mandatorily be required to file new applications within 18 months time of the publication date of the law, which is by no means is no later than June 24, 2014. As mentioned above these new applications will not be registered automatically but will be subject to examination on absolute and relative grounds. An application to renew a trademark should be made within such appropriate time. If not the trademark shall be deemed relinquished.
In such cases of amendment/refilling, the trademarks will not get any extension/ additional time due to the amendment. The trademark will be valid until the time stipulated in the original trademark expires only. In other words the mandatory amendment process is only for technical amendments on the previous registration and no extension period will granted.
Applications for re-registration have to be presented to the Intellectual Property Office within a year and half period of time and trademark certificates will be issued two month after publication in the news paper.
If you have any question or comment or need to get a practical legal support in this regard please Contact us.
Any pertinent information about trade mark registration and protection can be available from any Ethiopian Lawyer, Ethiopian Trademark Lawyer, Ethiopian Copyright Lawyer or Ethiopian Intellectual Property Lawyer.