New trademark law - an update

On December 24 2012 the implementing regulation needed to give effect to the 2006 Trademark Registration and Protection Proclamation in Ethiopia was published, bringing into force a new, orthodox, trademark regime for the registration and enforcement of trademark rights. The proclamation and regulation include a protection term of seven years (repeatedly renewable) and provision for the registration of service marks.

There are many unknown factors which require clarification by the director-general of the Ethiopian Intellectual Property Office (EIPO) but the situation seems to be as follows:

• Existing registered trademarks - all ‘old system’ cautionary notice registrations are no longer effective. Trademark owners must file new applications to protect their rights. There is currently no ‘sunrise’ period during which existing registered trademarks can claim priority.
• Pending registrations - pending cautionary notice applications submitted to the EIPO, but not yet registered, will continue to be processed under the old system. As things stand, there is little point in completing the registration process. New applications will need to be filed if protection is still required.
• Pending changes in ownership or renewal - it is not advisable to pursue pending renewals or changes in ownership matters, as the underlying right under existing registered trademarks will no longer be valid. Filing requirements remain unchanged, and official fees have increased.

Chris Walters, Spoor & Fisher, Jersey