Ethiopia has prepared draft legislation which, once promulgated, will bring about a more normal registration system to replace the somewhat unique system in place at present.
The current system is a hybrid cautionary notice and registration system. In terms of the present procedures, the trade mark proprietor has to obtain permission from the Ethiopian Intellectual Property Office (EIPO) to publish a Cautionary Notice in the local newspapers. Permission is only granted if the proprietor provides a legalised copy of a corresponding trade mark registration. Once permission is obtained and a Cautionary Notice published, a Trade Mark Deposit Certificate bearing the official number and term of protection is issued.
Under the draft law, it will no longer be necessary to file a legalised copy of a corresponding trade mark registration. Instead, any trade mark which is capable of being represented graphically and which consists of a letter, word, numeral, design or a three-dimensional shape may be registered, provided that it is distinctive. Companies launching a new trade mark filing program will not need to wait for registration in another jurisdiction before filing in Ethiopia. It will also be possible to claim priority in terms of the Paris Convention.
Once the new legislation is promulgated, it will bring Ethiopia’s trade mark law in line with other jurisdictions. The current period of registration is 6 years and renewal may be obtained for additional 6 year periods. The draft law provides for a 10 year term of protection.
The draft legislation makes provision for the protection of well-known trade marks and contains invalidation provisions. A source of frustration in the past has been that there were no guidelines for the cancellation of a trade mark registration obtained in bad faith and it was virtually impossible to remove a trade mark from the Register. The draft legislation, however, contains provisions for the cancellation of a trade mark on the basis of non-use (the non-use period is 3 years) and removal on other grounds. The law also contains provisions for action by the proprietor against the infringement of the trade mark and will enable customs, upon a written application of the right holder, to seize and retain under its control goods which, in its opinion, constitute infringed goods.
An important point to note is that all trade marks deposited under the existing system will have to be re-submitted for registration within 12 months from the date of the proclamation of the new legislation. It is however unclear at this time when that will be.
