Ethiopia – Issuance of Trademark Registration and Protection Proclamation

This is to advise that on the 7 July 2006 the Trademark Registration and Protection Proclamation was published under the No. 501/2006. Its major points are:

Registrable Marks
Collective marks, goods and service marks, colored marks protection is limited to the color combination in which it is registered, while black marks will be protected in all color combination.

Well-known Trademarks
Trademarks that are entitled to protection as international well-known trademarks shall be protected if well-know in Ethiopia.

Inadmissible Trademarks for Registration:

1. Trademarks which are consisted of sound or smell.
2. Trademarks that consist exclusively the surname of the applicant, this Article dose not apply if certified by the date of receipt of an application for registration of a trademark, the trademark has, as a result of its use, become well known in Ethiopia.
3. Trademark that is likely to mislead the public (i.e. geographical origin).
4. If the mark is identical with or confusingly similar to, or contains a translation of a trademark, that is well known in Ethiopia.

Filing Requirements

1. Three copies of reproductions of the trademark.
2. Class number and list of goods and services classified in accordance with the nice international classification of goods and services.
3. Power of attorney duly authenticated, is not clear to what level of legalization is required, or if late filing is allowed.

Claiming Priority
Priory can be claimed within 6 months; a certified copy must be submitted.

Examination
The TMO will carry on a formal as well as substantive examination; subsequently the Office may issue an examination report before final rejection of application.

Publication of Notice of Invitation for Opposition
The TMO shall publish a notice of invitation for opposition in the Intellectual Property Gazette or Newspaper having nationwide circulation at the cost of the applicant. This may be supplemented by a radio or television broadcast or a website notice as deemed necessary.

Opposition Period
To be decided by the Regulations to be issued shortly.

Duration of Registration
The registration of a trademark shall remain valid for a period of seven years from the date of submission of the application for registration.

Renewal of Registration
Registration of a trademark may be renewed for consecutive period of seven years.

Renewal of the registration of a trademark shall be made within three months after the expiry of the registration period; provided, however, after the expiry of the three months period, the registration may be renewed within the next six months, by paying in addition to the regular renewal fee, a penalty prescribed by the Regulations.

Assignment

1. Can be filed against pending or registered marks.
2. The Office may refuse the assignment without the business relating to the mark.
3. Co-owner assignment must obtain consent of the other party.

License

1. Must be registered and can be filed against pending or registered marks.
2. Collective marks may not be subject to license agreement.
3. Lacks of effective control provision by licensor against the quality will nullified the agreement.

User Requirements
Non-use for 3 years without legitimate reason makes the mark subject for Cancellation Action before the TMO by any interested person.

Transitory Provisos
Trademarks deposited before the entry into force of this Proclamation shall be submitted for registration within 18 months beginning the entry in to force of this Proclamation.

The Office will decide whether or not to registered deposited trademarks based on the requirements of this Proclamation.

Implementation Regulations
Implementation Regulations of this Proclamation will be issued.

Effective date:
Proclamation entered in to force as of date of publication in the Federal Negari Gazette done at 7 July 2006.