05-18-2016 (Newsletter Issue 9/16)Publication of Renewals RequiredThe Ethiopian Trademarks Office has issued new stipulations to enforce the Regulation of Renewal of 2006 Act No. 25 clause 4, which requires all renewals to be published in the Official Gazette and a local newspaper.
With immediate effect, the trademark office shall now record the effecting of a renewal registration and thereafter notify the same in the IP Gazette and a newspaper having nationwide circulation in Amharic. It is left to the trademark owner to optionally notify in an English speaking newspaper as well.
Source: JAH & Co. IP, Qatar
06-24-2014 (Newsletter Issue 10/14)
Extension to Deadline
The Ethiopian Registry has verbally confirmed that they extend the deadline for the re-registration of trademarks filed prior to 7 July 2006 for a further six month period.
Before the deadline of re-registration trademarks registered prior to 7 July 2006 was on 22 June 2014.
The deadline has been extended for further six month and will now expire in December 2014.
Source: Spoor & Fisher, South Africa/Jersey
05-16-2014 (Newsletter Issue 8/14)
Deadline for Re-Registrations/Other Requirements
As previously reported, following publication of the Regulations on 24 December 2012, it is necessary to re-register all trademarks filed prior to 7 July 2006. In addition, trademarks registered between 7 July 2006 and 24 December 2012 must be regularized under the new law by obtaining a certificate reflecting the 7-year term of protection prescribed by the new law.
There is conflicting information circulating in the industry regarding the applicable deadlines, and the discrepancies seem to arise from a misunderstanding of the correlation between the Gregorian calendar of 12 months and the Ethiopian calendar of 13 months.
Re-registration of trademarks registered prior to 7 July 2006:
There is an 18-month sunrise period for the re-registration of trademarks registered prior to 7 July 2006 following the publication of the Regulations. The publication date was 24 December 2012, which would result in a deadline for re-registration of 24 June 2014. However, in accordance with the local Ethiopian calendar the deadline will end on 22 June 2014. As this is a Sunday, the deadline will be extended to 23 June 2014.
Obtaining an amended new law certificate for trademarks registered 7 July 2006 and 24 December 2012:
Cases registered between 7 July 2006 and 24 December 2012, and due for renewal (based on a 7-year term) prior to 23 June 2014 do not need to be formally amended. The renewal certificate once issued will reflect the new law 7-year term.
For trademarks registered between 7 July 2006 and 24 December 2012, with a renewal date after 23 June 2014, a new law certificate should be obtained, amending the previously issued 6-year term of protection to the new 7-year term. It is recommend that in these cases, applications for the new law certificates are filed by 23 June 2014 despite the possibility that the EIPO may extend that deadline.
Source: Spoor & Fisher Jersey, www.spoor.com
02-04-2014 (Newsletter Issue 2/14)Deadline for Re-Registrations AdjustedOn 24 December 2012, new Regulations were published in Ethiopia , bringing into force the Trade Mark Registration and Protection Proclamation 2006, dated 7 July 2006.
The Regulations have required owners of trade mark registrations filed under the old law, namely before 7 July 2006, to re-register their existing registrations. This applies to all cases filed prior to 7 July 2006, irrespective of whether they have been renewed since. The Ethiopian Intellectual Property Office (EIPO) has confirmed that the deadline for re-registering cases registered under the old law will be 18 June 2014. The EIPO will not be accepting applications for re-registration after that date.
The new law extends the term of trade mark registrations in Ethiopia from 6 to 7 years, and provision is made in the Regulations for the amendment of the term of registrations filed between 7 July 2006 and 24 December 2012. The EIPO has announced that it is now accepting applications for amendment of such registrations, but the deadline for amending such cases will also expire on 18 June 2014.
Finally, the EIPO has clarified the status of registrations which became due for renewal between 24 December 2012 and 18 June 2014. Such registrations are now being renewed for a period of 7 years, without requiring amendment first.
Source: JAH & Co. IP, Qatar
04-03-2013 (Newsletter Issue 4/13)Timetable for TM Re-RegistrationThe Ethiopian Intellectual Property Office (EIPO) has issued a Directive confirming that all old-system cautionary notice 'registrations' filed before the effective date of the Proclamation (7 July 2006) are no longer effective but the owners of these 'registrations' will have a 'sunrise period' until 24 June 2014 within which to re-register their marks in terms of the new law.
In order to avoid congestion, the EIPO will be dealing with the old law 'registrations' in consecutive numerical order as indicated below:
0001-0400: March 25, 2013 – April 23, 2013
0401-0800: April 24, 2013 – May 23, 2013
0801-1200: May 24, 2013 – June 22, 2013
1201-1600: June 23, 2013 – July 22, 2013
1601-2000: July 23, 2013 – August 21, 2013
2001-2400: August 22, 2013 – September 20, 2013
2401-2800: September 21, 2013 – October 20, 2013
2801-3200: October 21, 2013 – November 19, 2013
3201-3600: November 20, 2013 – December 19, 2013
3601-4000: December 20, 2013 – January 18, 2014
4001-4400: January 19, 2014 – February 18, 2014
4401-4800: February 19, 2014 – March 20, 2014
4801-5200: March 21, 2014 – April 19, 2014
5201-5600: April 20, 2014 – May 19, 2014
5601-5900: May 20, 2014 – June 18, 2014
The requirements for re-registration of a trademark are as follows:
1. Power of attorney, legalized up to the Ethiopian Consulate.
2. Certified copy of corresponding home or foreign registration certificate with English translation, notarized. If unavailable, copy of certificate of incorporation, with English translation, certified.
Please note that the timetable is to assist the EIPO in dealing with a large backlog of work and while every effort should be made to comply with the timetable the EIPO will still accept all applications for re-registration properly filed by the deadline of 24 June 2014.
The EIPO has also confirmed that applications or registrations filed between 7 July 2006 and 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 by 24 June 2014.
Source: JAH & Co. IP, Doha, Qatar, Saba & Co. IP – Head Office, Lebanon
04-02-2013 (Newsletter Issue 4/13)New Trademark LawOn 24 December 2012, the Implementing Regulation to the 2006 Trademark Registration and Protection Proclamation in Ethiopia became effective. It brings into force a new, orthodox, trademark regime for the registration and enforcement of trade mark rights. The EIPO is expected to issue Directives shortly, which may clarify points that are currently outstanding.
Highlights of the Proclamation and Regulation:
- There is provision for the registration of service marks.
- Applications will be substantively examined.
- All old-system cautionary notice “registrations” (existing trademarks or “ETMs”) are no Longer effective. Trademark owners must file new applications to protect their rights under ETMs.
- For the time being, the filing requirements remain unchanged – new applications must be supported by a legalized power of attorney and a certified copy of a “home” or any other registration for the trademark. These documents must accompany the application.
- The official fees have increased
- Accepted applications will be published for opposition purposes. Until the official Journal appears, applications will be published in local newspapers.
- The opposition term is 60 days from the date of publication.
- The registration term is seven years from the date for application, renewable for further seven-year terms.
The effect of the new law:
1. Existing registered trademarks (ETMs) - All rights obtained using the former cautionary notice system are no longer effective. Trademark owners will need to file new applications to protect their trade marks.
2. Existing pending trademarks - Cautionary notice applications submitted to the EIPO but not yet registered (i.e. the Trademark Deposit Certificate has not yet been issued) will continue to be processed under the old regime. New applications will need to be filed if protection is still required.
3. Pending changes in ownership, renewal etc. - As the underlying right under ETMs will no longer be valid it is not advisable to pursue pending renewals, changes in ownership, and so on.
Source: JAH & Co. IP, Doha, Qatar
Legal basis is the "Trade Mark Registration and Protection Proclamation of July 2006 in force since December 24, 2012.
Ethiopia is not a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration.
It can also be acquired by sufficient public recognition.
Nice classification, 8th edition
Proclamation No 501/2006, Part 2, Art. 5.:
Registrable as a trademark are all signs capable of clearly distinguishing goods or services of a person from those of other persons.
A trademark which consists of a sound or smell is inadmissible for registration (Proclamation, Part 2, Art. 6. b.)
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, colour combinations, the three-dimensional form of a good or its packaging as well as any combination of the mentioned signs.
The following trademark types are registerable: trade marks, service marks and collective marks. There is provision for the registration of service marks.
The application is filed at the Ethiopian Intellectual Property Office.
Multiple-class applications are possible.
An application can include goods in any number of classes, but with additional charges for each additional class.
A power of attorney authenticated by an Ethiopian Consulate is necessary and a certified copy of Home registration without legalization by an Ethiopian consulate abroad OR a business license (if available) detailing the goods and/or services to be covered by the application, with verified English translation, legalized by an Ethiopian Consul.
Foreign applicants do not need a domestic registration.
Foreign applicants need a local agent.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
When the Office finds that the trademark application is acceptable, it shall publish a notice of invitation for opposition regarding the registration of the trademark in the Intellectual Property Gazette or a newspaper having nationwide circulation at the cost of the applicant. This may be supplemented by a radio or television bradcast or a website notice as deemed necessary.
The trademark will be registered unless opposition is submitted to the Ethiopian Intellectual Property Office within the opposition period.
The approximate time frame for completing the registration process of a trademark in Ethiopia is about 5 to 7 months from the filing date.
The opposition period is 60 days from the publication date of the notice of invitation for opposition.
Opposition against designation of IR Mark
not a member of the Madrid Agreement or Protocol
A trademark registration is valid for 7 years from the date of submission of the application for registration. The registration is renewable for consecutive periods of 7 years.
Renewal shall be made within three months after the expiry of the registration period. After the expiry of the three months period, the registration may be renewed within the next six months by paying in addition to the regular renewal fee, a penalty.
Further practical details are available in our publication on this topic here
If the trademark has not been used during a continuous period of at least 3 years from registration, it may be subject to cancellation.
Further practical details are available in our publication on this topic here
The official application fee is ETB 1,750.00 for one class and ETB 875.00 for each additional class.
Publication fee depends on the length of the cautionary notice. The publisher charges publication cost based on width-length (centimetre-column) of the cautionary notice.
Registration fee is ETB 3,000.00 per trademark in one class and ETB 1,500 for each additional class.
(Source for exchange-rates: bankenverband.de
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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