New Trademark Law - further update

On December 24 2012 Ethiopia introduced the Trademark Registration and Protection Council of Ministers Regulation 273/2012 to implement the Ethiopian Trademark Registration and Protection Proclamation 515/2006. The proclamation replaced the previous system of publication of cautionary notices followed by the issuance of 'trademark deposit certificates', which had no formal legal basis.

In order to file a new application, the following documents will be required:

1. Power of attorney, legalised up to an Ethiopian Consul;

2. (a)  Certified copy of corresponding home registration (no legalisation required), with verified English translation;

OR

(b) Business licence (if available) detailing the goods and/or services to be covered by the application, with verified English translation, legalised by an Ethiopian Consul.

Note:  the application for registration in Ethiopia and the supporting certified copy of home registration must be for an identical specification of goods and/or services (class headings are not accepted).

Additionally, the Ethiopian Intellectual Property Office (EIPO) issued subsequent directives to clarify a number of transitional issues of critical importance, specifically:

• All old-system cautionary notice ‘registrations’ (existing trademarks or ‘ETMs’) filed before the effective date of the proclamation (July 7 2006) are no longer effective. The owners of these registrations must file new applications to protect their rights. The EIPO confirmed that the 18-month 'sunrise period’ for re-registration has been extended with effect from the date when the implementing regulation was published. Consequently, the owners of such registrations have until June 24 2014 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. Power of attorney, legalised up to an Ethiopian Consul (if not previously provided);
  
  

  The following are required only if the term reflected in the certified copy of the home registration supporting the ETM has since expired. 

  2. (a) Certified copy of corresponding home registration (no legalisation required), with verified English translation;
  
  OR
  
  (b) Business licence (if available) detailing the goods and/or services to be covered by the application, with verified English translation, legalised by an Ethiopian Consul.
  
  

  Note: the application for re-registration must be identical to the ETM, including an identical specification of goods and/or services.

• The EIPO has also indicated that applications or registrations filed between the effective date of the Proclamation (July 7 2006) and the effective date of the regulation (December 24 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.

In light of the EIPO’s directives, trademark owners are advised as follows:

• All old-system cautionary notice ETMs filed before July 7 2006 should be re-filed, certainly before the priority deadline of June 24 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 July 7 2006 and December 24 2012 should continue to be prosecuted and will be finalised under the provisions of the new law.



• 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 July 7 2006, application should be made for new certificates to reflect the new seven-year renewal term.

There continue to be a few uncertainties, particularly concerning documentary requirements, procedures and fees, which need to be clarified by the EIPO. The earlier trademark owners file applications to register/re-register their marks, the less likely it is that they will encounter difficulties down the line.

Wayne Meiring, Spoor & Fisher, Jersey