New trade mark legislation which came into effect in Ethiopia at the end of last year has introduced welcome changes, but has also created some uncertainty.
The new Trademark Registration and Protection Council of Ministers Regulation No. 273/2012 was issued on 24 December 2012 pursuant to an earlier proclamation, Trademark Registration and Protection Proclamation 501/2006, issued in June 2006
The changes include the following: Applications will now undergo substantive examination. Priority can be claimed, based on an earlier application in a foreign country. Applications shall be treated as abandoned after certain periods of inaction. Publication and opposition procedures have been introduced. The international classification of goods and services will be followed. Multiclass applications will be allowed. Cancellation and invalidation procedures will apply and the renewal period has been extended from 6 to 7 years.
Unfortunately, the Regulation does not make it clear whether the old system of cautionary notices and trade mark registrations will still be effective. Some commentators take the view that the old system has effectively been replaced and will no longer apply, with the result that owners of existing registered trade marks would have to file new applications which will undergo the same substantive examination as new applications.
However, according to our own local sources, the Ethiopian Registry Office has introduced the following additional measures:
Trade marks deposited/registered prior to the Proclamation:
Only owners of trade marks deposited in Ethiopia prior to June 2006 would have to file new applications for registration, which will pass substantive examination. The Registry Office will set out a program of re-registration in accordance with previous deposit dates and will invite proprietors to have their trade marks re-registered. Re-registration has to be completed within one and a half year from the date of the issuance of the Regulation. This period may be extended by the Registry Office. These trade marks will take priority over new applications, provided the older marks were renewed under the previous system. If a trade mark is not re-registered within this period, it will be considered as abandoned.
Trade marks registered after the Proclamation:
For owners of trade marks registered after June 2006 there will be no need to file new applications. They will, however, be issued with new certificates for the remaining validity period, given that the protection period has been increased to seven years. There will be no application fee for these trade marks, but payment will be required for new certificates to be issued. Owners will be able to collect the new certificates within the one and a half year period mentioned above. There will be a time table set by the Registry Office and owners will be invited to collect their certificates upon payment of registration fees.
Pending trade mark applications filed between June 2006 and 24 December 2012:
Most of these applications are currently being published and will be granted certificates according to the new Regulation.
We have not yet received official confirmation of the above. Until such time the more conservative approach may well be to file new applications for any core trade marks that may be at risk. However, it seems highly unlikely that older rights will not be afforded some kind of protection and we are therefore of the view that the abovementioned measures will probably be implemented.