This is to advise that on the 7 July 2006 the Trademark Registration and
Protection Proclamation was published under the No. 501/2006. Its major
points are:
Registrable Marks
Collective marks, goods and service marks,
colored marks protection is limited to the color combination in which it
is registered, while black marks will be protected in all color
combinations.
Well known Trademarks
Trademarks that are entitled to
protection as international well-known trademarks shall be protected if
well-know in Ethiopia.
Inadmissible Trademarks for Registration:
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Trademarks which are consisted of sound or smell.
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Trademarks that consist exclusively the surname of the applicant,
this Article dose not apply if certified by the date of receipt of an
application for registration of a trademark, the trademark has, as a
result of its use, become well known in Ethiopia.
-
Trademark that is likely to mislead the public (i.e. geographical
origin).
-
If the mark is identical with or confusingly similar to, or contains
a translation of a trademark, that is well known in Ethiopia.
Filing Requirements
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Three copies of reproductions of the trademark.
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Class number and list of goods and services classified in accordance
with the nice international classification of goods and services.
-
Power of attorney duly authenticated, is not clear to what level of
legalization is required, or if late filing is allowed.
Claiming Priority:
Priory can be claimed within 6 months; a
certified copy must be submitted.
Examination:
The TMO will carry on a formal as well as
substantive examination; subsequently the Office may issue an examination
report before final rejection of application.
Publication of Notice of Invitation for Opposition:
The TMO
shall publish a notice of invitation for opposition in the Intellectual
Property Gazette or Newspaper having nationwide circulation at the cost of
the applicant. This may be supplemented by a radio or television broadcast
or a website notice as deemed necessary.
Opposition period:
To be decided by the Regulations to be
issued shortly.
Duration of registration:
The registration of a trademark shall
remain valid for a period of seven years from the date of submission of the
application for registration.
Renewal of Registration:
Registration of a trademark may be
renewed for consecutive period of seven years.
Renewal of the registration of a trademark shall be made within three
months after the expiry of the registration period; provided, however, 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 prescribed by the Regulations.
Assignment:
-
Can be filed against pending or registered marks.
-
The Office may refuse the assignment without the business relating to
the mark.
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Co-owner assignment must obtain consent of the other party.
License:
-
Must be registered and can be filed against pending or registered
marks.
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Collective marks may not be subject to license agreement.
-
Lacks of effective control provision by licensor against the quality
will nullified the agreement.
User Requirements:
Non-use for 3 years without legitimate
reason makes the mark subject for Cancellation Action before the TMO by any
interested person.
Transitory Provisos:
Trademarks deposited before the entry into
force of this Proclamation shall be submitted for registration within 18
months beginning the entry in to force of this Proclamation.
The
Office will decide whether or not to registered deposited trademarks based
on the requirements of this Proclamation.
Implementation Regulations:
Implementation Regulations of this
Proclamation will be issued.
Effective date:
Proclamation entered in to force as of date of
publication in the Federal Negari Gazette done at 7 July 2006.
Newsletter: September
