Ethiopia is a landlocked country situated in the Horn of Africa. It has in recent years become Africa’s fastest growing economy, owing its rise to an increase in industrial activity, including investments in infrastructure and manufacturing. China is not only its biggest foreign investor but also its largest trading partner. In light of the recent economic developments, there has been a growing need for the intellectual property laws of Ethiopia to align with international standards and practices.
In the absence of any established and enforceable trade mark legislation in Ethiopia prior to 2006, the enforcement of intellectual property rights in the country was ambiguous at best. In practice, it appeared that the publication of cautionary notices was the only option available to trade mark owners. The Trade Mark Registration and Protection Proclamation 501/2006 (“the Proclamation”), which only entered into force in early 2013, has therefore brought much needed clarity to the trade mark landscape in Ethiopia and has aligned local practice in Ethiopia with international trends in trade mark law.
Since the enactment of the Proclamation, it has become possible for trade mark proprietors to secure statutory protection for their marks, including service and collective marks. The trade mark system in Ethiopia now allows for trade mark applications to be lodged at the Ethiopian IP Office (EIPO), and makes provision for examination on formal, relative as well as substantive grounds; advertisement of acceptance; and the issuance of registration certificates with 7 year validity terms.
According to the Proclamation and formal Directives subsequently issued by the EIPO, a trade mark application filed by a foreign national or foreign legal entity, should be accompanied by a Power of Attorney (legalized up to Ethiopian Consular level); and evidence of a valid foreign registration of the trade mark from any other jurisdiction. In the absence of a foreign registration, the applicant’s certificate of incorporation will suffice. The certificate should include formal confirmation of the applicant’s commercial activities (as, for instance, described in the incorporation documentation or confirmed on a company letterhead via a notarized declaration).
Ethiopia is not yet a signatory to the Paris Convention. Notwithstanding this, the Proclamation confirms that priority may be claimed from applications filed in any Paris Convention country, if the Ethiopian application is filed within 6 months from the date of filing of the priority application. In this regard, a document confirming the priority application’s details should be submitted within three months of the Ethiopian filing date and accompanied by a legalized Power of Attorney.
Ethiopia’s formal and rather onerous filing requirements are directed towards preventing fraudulent third parties from filing trade mark applications for registration in instances where they are not the true proprietors of the mark. These requirements have however proven to be far too burdensome on trade mark proprietors and unduly delay the filing of trade mark applications in practice.
Insofar as the enforcement of trade mark rights are concerned, the Proclamation has made, inter alia, trade mark oppositions, trade mark infringement, invalidation and cancellation proceedings and customs recordal vis-à-vis registered trade marks possible in Ethiopia. The Proclamation is also quite revolutionary in that it provides for the protection of unregistered well-known trade mark and marks in which rights have been acquired through local use in Ethiopia. The legislation also prohibits the registration and use of another’s marks in relation to dissimilar goods which still suggests a connection to the proprietor of the mark or which is detrimental to the interests of the trade mark owner. The inclusion of some of these provisions are something of a misnomer in Ethiopia as they are premised on the articles of the Paris Convention and the TRIPS Agreement to which Ethiopia is not a party. Be that as it may, this shift in the law has expanded mechanisms for the enforcement of trade mark rights in Ethiopia.
In addition, it seems that we can expect the introduction of specialist IP Tribunals in Ethiopia in the coming years. Traditionally, IP disputes have been dealt with by an internal committee of the EIPO and by the Federal High Court. These tribunals have sometimes been criticised for a lack of knowledge and misapplication of the law in relation to IP matters and this has fueled the need for specialist adjudicators and forums. The development of specialist tribunals is therefore most welcome.
The recent developments of IP protection mechanisms in Ethiopia, have come at the right time and although only a single factor in the country’s development, makes Ethiopia a country to watch!
For further updates, information and queries on copyright law, trade mark, patent and design filings in Ethiopia, please contact firstname.lastname@example.org
by Sbongakonke Khumalo | Associate
and Kim Rampersadh | Senior Associate