Most Read Contributor in South Africa, September 2016
New trade mark legislation which came into effect in Ethiopia at
the end of last year has introduced welcome changes, but has also
created some uncertainty.
The new Trademark Registration and Protection Council of
Ministers Regulation No. 273/2012 was issued on 24 December 2012
pursuant to an earlier proclamation, Trademark Registration and
Protection Proclamation 501/2006, issued in June 2006
The changes include the following: Applications will now undergo
substantive examination. Priority can be claimed, based on an
earlier application in a foreign country. Applications shall be
treated as abandoned after certain periods of inaction. Publication
and opposition procedures have been introduced. The international
classification of goods and services will be followed. Multiclass
applications will be allowed. Cancellation and invalidation
procedures will apply and the renewal period has been extended from
6 to 7 years.
Unfortunately, the Regulation does not make it clear whether the
old system of cautionary notices and trade mark registrations will
still be effective. Some commentators take the view that the old
system has effectively been replaced and will no longer apply, with
the result that owners of existing registered trade marks would
have to file new applications which will undergo the same
substantive examination as new applications.
However, according to our own local sources, the Ethiopian
Registry Office has introduced the following additional
Trade marks deposited/registered prior to the
Only owners of trade marks deposited in Ethiopia prior to June
2006 would have to file new applications for registration, which
will pass substantive examination. The Registry Office will set out
a program of re-registration in accordance with previous deposit
dates and will invite proprietors to have their trade marks
re-registered. Re-registration has to be completed within one and a
half year from the date of the issuance of the Regulation. This
period may be extended by the Registry Office. These trade marks
will take priority over new applications, provided the older marks
were renewed under the previous system. If a trade mark is not
re-registered within this period, it will be considered as
Trade marks registered after the Proclamation:
For owners of trade marks registered after June 2006 there will
be no need to file new applications. They will, however, be issued
with new certificates for the remaining validity period, given that
the protection period has been increased to seven years. There will
be no application fee for these trade marks, but payment will be
required for new certificates to be issued. Owners will be able to
collect the new certificates within the one and a half year period
mentioned above. There will be a time table set by the Registry
Office and owners will be invited to collect their certificates
upon payment of registration fees.
Pending trade mark applications filed between June 2006
and 24 December 2012:
Most of these applications are currently being published and
will be granted certificates according to the new Regulation.
We have not yet received official confirmation of the above.
Until such time the more conservative approach may well be to file
new applications for any core trade marks that may be at risk.
However, it seems highly unlikely that older rights will not be
afforded some kind of protection and we are therefore of the view
that the abovementioned measures will probably be implemented.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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