As an update to our earlier newsflash, dated 15 January, The Ethiopian Intellectual Property Office (EIPO) has since issued Directives which have clarified a number of key issues regarding the new trade mark law that came into effect on 24 December 2012.

All old-system cautionary notice ‘registrations’ (existing trade marks or ‘ETMs’) filed before the effective date of the Proclamation (7 July 2006) are no longer effective. The owners of these registrations must file new applications to protect their rights. The EIPO confirms that the 18 month ‘sunrise period’ for claiming priority has been extended with effect from 24 December 2012, the date when the implementing Regulation was published. Consequently, the owners of such registrations have until 24 June 2014 within which to re-register their marks in terms of the new law. 

The EIPO will be providing a timetable for re-registering these old registrations so as to avoid congestion at the Registry.

In order to re-register ETMs, the following documents will be required:

  1. A power of attorney legalised up to an Ethiopian consul.

  2. In the event that the term reflected in the certified copy of the home/foreign registration supporting the ETM has since expired, we will need to submit a fresh certified copy which demonstrates that the home/foreign registration is currently in force. If, for any reason, this cannot be provided, then a certified copy of an alternative registration should be acceptable.

The EIPO has also indicated that applications or registrations filed between the effective date of the Proclamation (7 July 2006) and the effective date of the Regulation (24 December 2012) will be dealt with in terms of the new law, and do not need to be re-registered, although it will be necessary to apply for new certificates of registration upon payment of a fee.

Our recommendations

In light of the EIPO’s directives, our recommendations are as follows:

  • All old-system cautionary notice ETMs filed before 7 July 2006 should be re-filed, certainly before the priority deadline of 24 June 2014. Applications for re-registration should be instructed as soon as possible so that they can be held in readiness for filing as soon as the EIPO timetable permits.

  • Pending applications filed between 7 July 2006 and 24 December 2012 should continue to be prosecuted and finalised.

  • Pending changes in ownership, renewal etc., should be pursued if it is intended to re-register the relevant ETMs.

  • For those registrations which were filed after 7 July 2006, application should be made for new certificates.

Continuing uncertainties

There continue to be a few uncertainties, particularly concerning documentary requirements, procedures and fees, which need to be clarified by the EIPO. We will continue to collaborate in that process and notify you of developments as soon as they occur. We reiterate our earlier advice, though, that the earlier trade mark owners file applications to register/re-register their marks, the less likely it is that they will encounter difficulties down the line.

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.