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TRADEMARK PROTECTION IN ETHIOPIA

by Shernaz Desa - 

The Ethiopian Trademark Registration and Protection Proclamation No. 501/2006 dealing with the protection of trademarks in Ethiopia was published on 7 July 2006.

The law provided in article 50 that it shall enter into force on the date of its publication in the federal gazette, but in the absence of the proclamation of the implementing regulations to the law, there was some uncertainty with respect to its application during the past number of years.

On 24 December 2012, Council of Ministers Regulation No. 273/2012 was published, providing the implementing regulations to the Trademark Registration and Protection Proclamation No. 501/2006.

It is important to note that trademarks protected in Ethiopia based on applications filed prior to 7 July 2006 has to be refilled under the 2006 law. The refilling of these trademarks will be the same as fresh applications and unlike previously, will be subject to examination on absolute and relative grounds.  There is a grace period of 18 months as from the date of the publication of the Council of Ministers Regulation - expiring on 24 June 2014 – during which such applications should be filed.  Indications are that the original date of filing of such trademarks will be recognised.

With respect to trademarks that were filed and registered after 7 July 2006, applications will have to be submitted in order to obtain new certificates of registration.     

The Ethiopian Intellectual Property Office has clarified a number of points related to the new trademark regulations which include the following: 

  1. Trademarks that were registered before the Trademark Registration and Protection Proclamation was issued - 7 July 2006 - must be re-registered.  For a trademark to be re-registered, a new application for registration has to be filed in accordance with the requirements set forth in the Trademark Registration and Protection Proclamation and the new regulations. 
  2. Trademarks that were registered after the issuance of the Trademark Registration and Protection Proclamation – 7 July 2006 - must be resubmitted to the Ethiopian Intellectual Property Office for the issuance of a new certificate of registration related to the relevant period of protection (seven years). 

The re-registration and amendment of post 7 July 2006 trademark registrations will be carried out in accordance with a schedule to be issued by the Ethiopian Intellectual Property Office.  Proprietors of trade mark registrations under either the old pre-7 July 2006 or post-7 July 2006 systems must ensure that they provide instructions to their legal representative in a timely manner in order to ensure the adequate protection of their valuable trademark assets in Ethiopia. 

If you have any questions regarding the protection of trademark in Ethiopia, please contact the author.

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