Circular No. 362: Ethiopia - Statements of Property, Use and Protection no Longer Allowed
The Ethiopian Ministry of Trade and Industry has recently advised that it will no longer accept Statements of Property, Use and Protection. The only acceptable supporting documents will be legalized copies of home or other foreign registrations.
Although there are no statutory provisions for the registration of trade marks in Ethiopia, protection can be obtained by a non-statutory but formalised system. The traditional system of publishing cautionary notices (in order to deprive infringers of the defense that they had no knowledge of the true ownership of the infringed mark) has evolved into a recognisable registration system. In fact enforcement by Criminal and Civil courts of trade mark rights is subject to those rights having been recorded under this system.
In Ethiopia, contrary to the practice in other cautionary notice jurisdictions, where publication is usually the result of independent action by the trade mark owner, permission must be obtained from the Registration and Licensing department of the Ministry of Trade and Industry to publish Cautionary Notices.
The unusual system of protection in Ethiopia is briefly set out below. Cautionary Notices are published in local Amharic and English newspapers. Once published, there is a thirty day opposition period and if no opposition is filed a Trade Mark Deposit Certificate is issued. The Trade Mark Deposit Certificate is dated and allocated a number. The term of protection is six years from the date of the Trade Mark Deposit Certificate and the "registration" number is retained on renewal. A single Cautionary Notice and Trade Mark Deposit Certificate can cover any number of goods and services. The International (Nice) Classification is recognised and the Trade Mark Deposit Certificate reflects the classes covered by the Cautionary Notice.
Traditionally in terms of the Ministry´s internal directives all applications for permission to publish Cautionary Notices had to be accompanied by a certified and legalised copy of a corresponding home or foreign registration. A practice developed in terms of which trade mark officials began to accept Statements of Property Use and Protection in lieu of legalised copy registrations. This document would usually reflect the trade mark, the goods and a statement by the owner to the effect that it is the owner and proprietor of the trade mark which it used and which it wished to protect in Ethiopia.
A Statement of Property Use and Property was particularly useful at the start of a filing program where the proprietor had no prior registrations. Also, a single statement could be used to support a Cautionary Notice covering a number of classes, obviating the need to file separate certified copies for each class and thereby minimising legalisation costs. As a result Statements were often used and soon became the base for most applications.
The Ministry of Trade and Industry has now advised that it will adhere strictly to its earlier directive and will no longer accept Statements of Property Use and Protection. An application must now be accompanied by a legalised certified copy of a home or foreign certificate of registration (not application). This certified copy should depict the trade mark exactly as it is to be protected in Ethiopia and cover approximately the same goods. It should also indicate the current term of protection of that trade mark and must be legalised up to an Ethiopian Consul.
This decision is effective immediately and Ministry will not accept Statements legalised after 7 April 2003. We understand that this decision is an attempt by the Ministry of Trade and Industry to get their "house in order" so to speak before the adoption of a new Trade Mark Law and the transfer of responsibility for the regularization of the publication of Cautionary Notices to a new office.
At present, a Patent Law is in effect, and patents are registered through the Ministry of Science and Technology. The plan is to establish a single Intellectual Property Office, which will be responsible for all aspects of Intellectual Property and which will be accountable to the Ministry of Science and Technology. This new office is to be established before the promulgation of the new Trade Mark Law and the Ministry of Science and Technology will be tasked with approving and granting permission to publish cautionary notices in terms of the current procedure.
In addition, we understand that the move away from the use of Statements may also be an attempt to ensure that third parties are not able to register foreign marks to which they have no claim, by filing a Statement of Property, Use and Protection. It would seem that Ethiopian authorities are keen to move towards a formalised system of protection, and that they would prefer to base this protection on proof of ownership, in the form of a prior registration, rather than a statement to that effect.
Click here for Ethiopia Filing Requirements.
Spoor & Fisher Jesey