Following publication on 24 December 2012 of enabling regulations
As previously advised, the Ethiopian Government approved a Trade Mark Proclamation some seven years ago but failed to publish enabling regulations until December 2012.
The regulations have given rise to a fair amount of speculation, particularly with regard to the recognition of prior rights.
- Up until 2006, and in the absence of formal legislation, trade mark proprietors were allowed to publish Cautionary Notices, in English and Amharic, in two local newspapers, to alert the public to the existence of proprietary rights. These Notices were then “deposited” at the Trade Marks Office and a deposit certificate issued. These deposit registrations were valid for a six year term, with interim abridged publications being required at two yearly intervals, and full republication and reissueance of Deposit Certificates every six years.
- Following the passing of the Proclamation in 2006, and the establishment of the Ethiopian Intellectual Property Office shortly thereafter, the authorities started issuing, instead of “deposit certificates”, trade mark registration certificates. These certificates still reflected a six year term of validity and the process followed by the authorities in Ethiopia was still as before, involving the publication of Cautionary Notices in two newspapers every two years.
- In terms of the new system, formal trade mark applications will be lodged at the Ethiopian Intellectual Property Office and these will be examined as to formalities, and relative, as well as substantive grounds. While the legislation makes mention of Paris Convention priority claims, the country has not yet joined the Paris Union.
- The concern regarding the need to re-register each and every trade mark previously “deposited” or registered in Ethiopia was a question that required consideration and an answer. This has recently been clarified following discussions with the Director General of the Ethiopian Intellectual Property Office. An Implementation Directive for Re-registration of Trade Marks was issued in February 2013.
- The Council of Ministers has since enacted regulation no. 273/2013 which states that all trade marks deposited prior to the enactment of the Proclamation i.e. July 2006, must undergo a re-registration process, while trade marks registered after the enactment of the Proclamation i.e. after July 2006, will need to be amended so that the registration certificates reflect the correct term of validity.
- It is clear that trade marks that were “deposited” before 7 July 2006 must be re-registered even if the initial term or subsequent term of validity has not yet expired. Re-registration will be equivalent to a new registration and must be carried out in line with the requirements set out in the Trade Mark Law and Regulations, although there may be no need to supply supporting document if what is already on record satisfies current requirements. It seems as if the original date of filing will be recognised.
- Trade marks that were registered after 7 July 2006 must go through an amendment process. A new certificate will be issued, reflecting a seven year term of validity and these registrations will be renewable for like seven year terms in perpetuity, maintaining the original “priority” date.
- Of considerable concern was the fact that the regulations set out what appeared to be an eighteen month period within which proprietors of trade marks would have to either re-register or amend their registrations in Ethiopia. The eighteen month term has been set to enable the Ethiopian Intellectual Property Office to drive the process but we have been assured, by the Director General himself, that this term is likely to be extended, for various reasons, one of which is the lack of resources within the EIPO. The Director is in the process of compiling lists of marks requiring either re-registration or amendment. He proposes forwarding these lists to the agents on record, who will then need to look to their clients for instructions. It is understood that it is not possible for trade mark owners, of their own accord, and/or through their local agents, to make application at this time for re-registration or amendment.
- With the enactment of the regulations, has come a significant increase in official fees. Each additional class, whether it be on application or finalization of registration, attracts 50% of the official fee payable for the first class.
- Where it was previously necessary to submit a legalized Power of Attorney, together with a soft copy of a corresponding home registration, in order to lodge a trade mark application in Ethiopia, the documentary filing requirements have changed somewhat. The Director General agreed that the term “authenticated” as contained in the new legislation, did not presuppose that legalization under Consular authority was necessary. He was swayed by our arguments to the effect that a Power of Attorney signed before a Notary Public should suffice. He was however less accommodating as far as the other requirement, being the furnishing of a certified extract attesting to the existence of the applicant company is concerned. He requires that the certified copy of the applicant’s Certificate of Incorporation be authenticated as such by the issuing authority in the country of origin. It is now no longer necessary to support applications with evidence of prior registrations in another jurisdiction.
- The EIPO has already started publishing an IP Gazette and it seems that while, at least in the short term, publication of trade mark applications will need to take place in a local newspaper, the intention is to have all applications appear in the IP Gazette when funds and resources permit this. The Office has however already launched its own website at www.eipo.gov.et and it seems to be the intention to have local agent make use of the website, and dedicated e-mail addresses, for purposes of filing trade mark applications and paying official fees. The website is currently not particularly well constructed and does not seem to be functioning as intended.
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