There are two important IP court judgments in Ethiopia, which have been recently reviewed. Ethiopian IP court judgments seem to be very rare.
Confusingly similar trade marks – Hybrid Designs PLC v SeregelaRide Taxi Services PLC, Federal High Court, October 2021
Hybrid Designs, a taxi provider, uses the trade mark Ride which is a registered trade mark. When a competitor started offering a similar service under the trade mark Seregela Ride, Hybrid Designs has been sued for trade mark infringement. Hybrid alleged a likelihood of confusion and requested an injunction and damages.
Seregela has a trade mark registration in classes 39 and 42 for the name Seregela, but this registration does not feature the word ‘ride’. Seregela claimed that the word ‘ride’ is generic, and that no one party should have exclusive rights to it. It was argued that the marks Ride and Seregela Ride are not confusingly similar. It was argued that Hybrid Designs’ trade mark registration is limited to software services in class 42, and therefore does not extend to transport services in class 39.
The court found in favour of Hybrid Designs, saying that the use of the word Ride in conjunction with the name Seregela infringes the rights in the trade mark Ride. It issued an injunction requiring Seregela to desist from using the word Ride as part of its trade mark. The court made a point that no actual damage has been proved so it did not order payment of damages.
Reciprocity – Ahmed Abdurahman and Ely’s Detergent Industry Company, Federal Supreme Court, 5 August 2021
This was a judgment of the country’s highest court, the Federal Supreme Court Cassation bench.
The case involved an opposition that a Somalian company had filed against three trade mark applications that had been lodged by an Ethiopian company. The Ethiopian company argued that the opposition was invalid because Ethiopia does not have a reciprocity agreement with Somalia.
The court held that the opposition had been validly filed and that the lack of a reciprocity agreement was not determinative. It made the following points:
- The principle of reciprocity is not something that is necessarily linked to international agreements – it is, rather, the granting of rights to citizens of foreign countries in exchange for those countries granting the same rights to Ethiopians.
- Even though there is no reciprocity agreement, Ethiopia has been granting reciprocity to Somalia – in the form of allowing trade mark filings and oppositions – since 1986. Ethiopia has registered some 11,000 trade marks belonging to foreigners.
- The granting of reciprocity is important to increase foreign direct investment and avoid reprisals for seeking protection abroad.
- If foreigners have the right to file trade marks it must follow that they also have the right to oppose the trade marks of others in order to defend their rights.
Hopefully more Ethiopian IP court judgments will become publicly available – indeed IP judgments from across the African continent.
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