Overview

This Proclamation establishes the legal framework for the Registration, Protection, and Enforcement of trademarks in Ethiopia. Its purpose is to protect business owners’ reputation and goodwill, guide consumer choice, and promote national economic development. The law is administered by the Ethiopian Intellectual Property Office.

Key Definitions & Scope

• Trademark: Any visible sign (words, designs, letters, numerals, colors, or a product’s shape) that can distinguish the goods or services of one person from another. Sounds and smells are explicitly not admissible for registration.
• Scope: Foreigners have the same rights and obligations as Ethiopians, subject to reciprocity or international treaties.
• Ownership: Rights are acquired and become binding on third parties only upon the grant of a registration certificate.

Key words and phrases

Trademark, Registration, Protection, Ethiopian Intellectual Property Office, Distinctive character / Distinguishing goods or services, Registration certificate, Goods and services classification, Well-known trademark, License contract, Transfer of rights, Cancellation for non-use

Registration Process

1. Application: A single application must be for one trademark, filed with the Office, and include a reproduction of the mark and a list of goods/services classified according to the international classification.
2. Examination: The Office examines the application to ensure it meets the requirements (e.g., distinctiveness, not contrary to public order).
3. Publication & Opposition: If acceptable, the Office publishes a notice inviting opposition. Any person can object within a prescribed period.
4. Appeals: Decisions by the Office can be appealed to the competent court (Federal Courts).

Grounds for Refusal of Registration

A trademark will not be registered if it:

• Lacks distinctiveness.
• Is contrary to public order or morality.
• Consists of descriptive signs (e.g., indicating quality, quantity, or geographical origin).
• Is identical or confusingly similar to a well-known trademark in Ethiopia.
• Unlawfully contains elements from another person’s protected literary, artistic, or design rights.

Rights & Duration of Registration

• Rights Conferred: The owner has the exclusive right to use the mark and authorize others to use it. They can also prevent third parties from using identical or confusingly similar signs that could mislead the public.
• Duration: Initial registration is valid for 7 years from the filing date.
• Renewal: It can be renewed indefinitely for consecutive 7-year periods upon payment of a renewal fee.

License Contracts

The owner of a registered trademark may grant a license to another person to use the mark. The license must be in writing. The Office will register the license contract and make it publicly available.

Transfer of Rights

A registered trademark is transferable (e.g., via assignment) with or without the business. The transfer must be in writing, jointly requested by the involved parties, and recorded with the Office to be effective against third parties.

Cancellation & Invalidation

• Non-Use: A trademark registration can be cancelled upon request if it has not been legitimately used in Ethiopia for a continuous period of at least three years prior to the cancellation request.
• Invalidation: A registration can be invalidated if it is proven that it did not meet the initial requirements for registration at the time it was filed.

Enforcement of Rights

• Provisional Measures: The court can order prompt measures to prevent infringement or preserve evidence.
• Civil Remedies: Courts can issue injunctions to stop infringement and order the infringer to pay damages (calculated as the net profit earned or a reasonable royalty).
• Criminal Sanctions: Intentional infringement is punishable by rigorous imprisonment of not less than 5 years and not more than 10 years. Gross negligence is punishable by 1 to 5 years in prison. Penalties also include the seizure and destruction of infringing goods.
• Measures at Customs: The Customs Authority can seize suspected infringing goods based on a written application from the rights holder.

Other Key Provisions

• Trademark Agents: Agents acting for applicants must be registered with the Office.
• Transitional Provision: Trademarks deposited before the Proclamation’s effective date had 18 months to be submitted for formal registration.
• Competent Court: The Federal Courts have jurisdiction over all disputes governed by this Proclamation.
• Effective Date: The Proclamation came into force on July 7, 2006.