As an update to our earlier newsflash, dated 15 January, The Ethiopian Intellectual Property Office (EIPO) has since issued Directives which have clarified a number of key issues regarding the new trade mark law.

Background

On 24 December 2012, Ethiopia introduced the Trademark Registration and Protection Council of Ministers Regulation No. 273/2012 to implement the Ethiopian Trademark Registration and Protection Proclamation No. 515/2006 (“the Proclamation”). The Proclamation replaces the previous system of publication of cautionary notices followed by the issuance of “Trade Mark Deposit Certificates”, which had no formal legal basis.

In order to file a new application, the following documents will be required:


1. Power of Attorney, legalised up to an Ethiopian Consul
     (a) Certified copy of corresponding Home Registration (no legalisation required), with verified English translation OR
     (b) Business License (if available) detailing the goods and/or services to be covered by the application, with verified English translation, legalised by an Ethiopian Consul

Note: The application for registration in Ethiopia and the supporting certified copy of home registration must be for an identical specification of goods and/or services. (Class headings are not accepted.)

Additionally, the Ethiopian Intellectual Property Office (EIPO) issued subsequent Directives to clarify a number of transitional issues of critical importance, specifically:

  • All old-system cautionary notice ‘registrations’ (existing trade marks or ‘ETMs’) filed before the effective date of the Proclamation (7 July 2006) are no longer effective. The owners of these registrations must file new applications to protect their rights.
  • The EIPO confirms that the 18 month ‘sunrise period’ for re-registration has been extended with effect from the date when the implementing Regulation was published. Consequently, the owners of such registrations have until 24 June 2014 within which to re-register their marks in terms of the new law. 

The EIPO will be providing a timetable for re-registering these old registrations so as to avoid congestion at the Registry. In order to re-register ETMs, the following documents will be required:

1. Power of Attorney, legalised up to an Ethiopian Consul (if not previously provided)

The following are required only if the term reflected in the certified copy of the home registration supporting the ETM has since expired:

  • a) Certified copy of corresponding Home Registration (no legalisation required), with verified English translation OR
  •    (b) Business License (if available) detailing the goods and/or services to be covered by the application, with verified English translation, legalised by an Ethiopian Consul

Note: The application for re-registration must be identical to the ETM, including an identical specification of goods and/or services.

  • The EIPO has also indicated that applications or registrations filed between the effective date of the Proclamation (7 July 2006) and the effective date of the Regulation (24 December 2012) will be dealt with in terms of the new law, and do not need to be re-registered, although it will be necessary to apply for new certificates of registration upon payment of a fee.

Our Recommendations:

In light of the EIPO’s directives, our recommendations are as follows:  

  • All old-system cautionary notice ETMs filed before 7 July 2006 should be re-filed, certainly before the priority deadline of 24 June 2014. Applications for re-registration should be instructed as soon as possible so that they can be held in readiness for filing as soon as the EIPO timetable permits.
  • Pending applications filed between 7 July 2006 and 24 December 2012 should continue to be prosecuted and will be finalised under the provisions of the new law.
  • Pending changes in ownership, renewal etc., should be pursued if it is intended to re-register the relevant ETMs.
  • For those registrations which were filed after 7 July 2006, application should be made for new certificates to reflect the new 7 year renewal term.

Continuing uncertainties

There continue to be a few uncertainties, particularly concerning documentary requirements, procedures and fees, which need to be clarified by the EIPO. We will continue to collaborate in that process and notify you of developments as soon as they occur. We reiterate our earlier advice, though, that the earlier trade mark owners file applications to register/re-register their marks, the less likely it is that they will encounter difficulties down the line.

For further information, please speak to your usual Spoor & Fisher contact or contact Wayne Meiring.