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Amendments to Trademark Laws

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Apr 02, 2013 (Newsletter Issue 4/13)
Ethiopia
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New Trademark Law


On 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