Country: Ethiopia



Primary Contacts
Trade Mark Registration and Recordals	Michelle Boyes
Trade Mark Renewals	Rita Henderson
Patent Registration and Recordals	Kary Day
Patent Annuities	Sara Lloyd
Contentious Matters (Oppositions, Infringement Actions, etc.)
Trade Marks	Martin Chinnery
Patents	Louise Audhlam-Gardiner

Trade Mark Information
Can services be registered ?	Yes
Single/Multi-Class Jurisdiction	Multi-Class
Is the International Classification followed ?	Although it is yet to be ratified, the new Ethiopian Trade Marks Act follows the ninth edition of the Nice Classification.
Can Convention priority be claimed	No
Documentation required to file	Re-registration Application Power of Attorney, Legalised up to Ethiopian Consul; Certificate of Home or Foreign Registration, Legalised up to Ethiopian Consul
Opposition period after publication	N/A
Renewal due	Data is being populated - please direct queries to Lysaght & Co. at this time
Grace Period	Data is being populated - please direct queries to Lysaght & Co. at this time
Documents required to renew	Data is being populated - please direct queries to Lysaght & Co. at this time
Proof of use due	Data is being populated - please direct queries to Lysaght & Co. at this time
Documents required to file proof of use	Data is being populated - please direct queries to Lysaght & Co. at this time
Can be struck off for non-use	N/A
Patent Information
Member of PCT	No
Can Convention priority be claimed	Yes
Deadline for filing priority document	3 months from filing date
Does the priority document have to be translated ?	Only if not in English
Required Documents	Substantive Application - Power of Attorney legalised up to the Ethiopian Consul; - Specification, including claims, abstract and drawings in triplicate, in English or Amharic (four copies required); - Certified copy of priority document(s); - Assignment of priority rights; - Assignment of Invention, simply signed; - Filing date and number of any corresponding foreign applications; - Results of search and examination of any corresponding foreign applications and evidence of grant thereof; Patent of Introduction - Certified copy of the base patent, notarised; - Power of Attorney legalised up to the Ethiopian Consul.
Duration	Substantive Application 15 years calculated from the filing date. Extension of this term is possible for a further period of five years, provided that the patent is properly worked in Ethiopia, and subject to both the payment of renewal fees annually in advance and submission of proof of working of the invention in Ethiopia for each year as from the third year after the patent has been granted. Patent of Introduction It is not entirely clear from the Ethiopian Patents Proclamation of the term of a Patent of Introduction. In our interpretation, a Patent of Introduction expires at the same time as the foreign base patent, but its term may not exceed 10 years calculated from the date of filing in Ethiopia. The patent only remains in force, however, by virtue of both payment of renewal fees annually in advance, beginning on the first anniversary of the date of filing, and submission of proof of working of the invention in Ethiopia for each year as from the third year after the patent has been granted.
Annuities	Renewal fees are payable annually from the date of filing. Failure to pay renewal fees when due, or within a six month period of grace, will lead to lapse of the patent or application.

News Articles: Ethiopia

Ethiopia - Implementation of New Trade Mark Regulations - Update

Since commencing the process of the re-registration of old trade marks, the Ethiopian IPO (EIPO) has altered some of its requirements.

Insofar as documentation is concerned, it transpires that Certificates of Incorporation are not being accepted by the EIPO as they do not provide evidence that the Applicant is actively engaged in business. Instead, the following documents will be required:-

- A Power of Attorney, legalised up to the Ethiopian Consul;
- A Certificate of Business Licence, OR a notarised letter from a lawyer stating that the country concerned does not issue Business Licences, OR a certified copy of a home registration of the mark, with a verified English translation. In the absence of a home registration, a certified copy of a registration anywhere else in the world will be sufficient.

We have advised the EIPO that very few countries issue Business Licences, and that a lawyer's letter of the type requested will be awkward to obtain. We therefore recommend that filing instructions should be accompanied by a certified copy of the Applicant's home registration, or a registration elsewhere, as used to be the case under the old law.

Furthermore, it transpires that the EIPO issued its previous guidelines of when old law registrations should be re-filed in error. The numbers given to the trade marks in the previous guidelines were not registration numbers but application numbers. Furthermore it should be stressed that re-registered marks will not retain the original filing date, but will date from the date of filing the application for re-registration. It is therefore vital that proprietors with registrations issued prior to 7 July 2006 re-register their trade marks as soon as possible.

The situation in Ethiopia is very frustrating for us as the EIPO's requirements are changing all the time. We will post any further updates to our website as and when they are received.

2nd May 2013

Ethiopia - Implementation of New Trade Mark Regulations

The Ethiopian IPO (EIPO) has commenced the process of re-registering trade marks filed under the old law. It is our understanding that trade marks filed under the former law, namely prior to 7 July 2006, have to be re-registered, whilst those filed between 7 July 2006 and 24 December 2012 will be subject to amendment.

In order to stagger the re-registration process and avoid a log-jam of applications arriving at the last minute, the EIPO has issued guidelines setting out a timeframe for the re-registration process. It should be noted that the dates given are for guidance only, as it will be possible to re-register any of the trade marks concerned before the current deadline of 18 June 2014. However, the batches of re-registrations proposed by the EIPO are as follows:-

Registration Numbers -> Dates to be re-registered
0001-0400 -> 25/03/13 - 23/04/13
0401-0800 -> 24/04/13 - 23/05/13
0801-1200 -> 24/05/13 - 22/06/13
1201-1600 -> 23/06/13 - 22/07/13
1601-2000 -> 23/07/13 - 21/08/13
2001-2400 -> 22/08/13 - 20/09/13
2401-2800 -> 21/09/13 - 20/10/13
2801-3200 -> 21/10/13 - 19/11/13
3201-3600 -> 20/11/13 - 19/12/13
3601-4000 -> 20/12/13 - 18/01/14
4001-4400 -> 19/01/14 - 18/02/14
4401-4800 -> 19/02/14 - 20/03/14
4801-5200 -> 21/03/14 - 19/04/14
5201-5600 -> 20/04/14 - 19/05/14
5601-5900 -> 20/05/14 - 18/06/14

It is our understanding that registrations numbered 5901 and higher will be subject to amendment of the renewal term from six years to seven. The amendment process will not begin until after the re-registration process has ended.

Provided that all of the original documents filed when the trade marks were originally registered can be located by the EIPO, there should be no need to provide any documents to re-register an existing trade mark. However, if the EIPO are unable to locate the original documents, the following documents will be required:-

A Power of Attorney legalised up to the Ethiopian Consul;
A Notarised Certificate of Incorporation of the Applicant Company.

If for any reason a notarised Certificate of Incorporation cannot be provided, then evidence of a home registration will be required. It remains to be seen how much of the original documentation has been retained by the EIPO for existing cases, and we anticipate a large number of cases for which providing fresh documentation will be necessary.

Once an existing case has been re-filed, its new filing date will be the date of re-filing, and the case will be due for renewal seven years thereafter. Publication of a re-registered mark will still take place in the Amharic language newspaper, but publication in an English language newspaper will be optional.

We will be sending emails to all of our clients who own any of the cases requiring re-registration separately, but in the meantime, if you have any queries, please do not hesitate to contact us.

27th March 2013

Ethiopia - Publication of New Trade Mark Regulations

New Regulations were published in Ethiopia on 24 December 2012, bringing into force the Trade Mark Registration and Protection Proclamation 2006, dated 7 July 2006.

The new law extends the term of trade mark registrations from six years to seven, renewable for like periods. Priority can be claimed, and a sixty day term is allowed for opposition. Registrations can be cancelled if it can be proved that they have not been used for a period of three years or more. New applications will continue to require a power of attorney legalised by an Ethiopian Consul and a certified copy of the applicant's home registration of the relevant trade mark.

The most significant aspect of the new Regulations is not the changes in the law, but the treatment of existing cases filed prior to 24 December 2012, and there is still much uncertainty over this issue. We understand that all existing cases filed prior to 7 July 2006 will have to be re-filed, and the Ethiopian Intellectual Property Office (EIPO) has given a "sunrise period" of 18 months for the re-filing process to be completed. It is presently assumed that this "sunrise period" began on 24 December 2012 and will therefore end on 24 June 2014, but it seems that this term is provisional as the EIPO has yet to confirm the relevant dates. We understand that such trade marks are distinguished by the fact that they were issued with a "Trade Mark Deposit Certificate" at the time of registration.

The re-filing of such trade marks will also require a Power of Attorney legalised by the Ethiopian Consul and a certified copy of the applicant's home registration of the relevant trade mark. If the applicant's home registration used to obtain the original Ethiopian registration is no longer in force, we understand that a certified copy of a registration of the same mark in another jurisdiction should be acceptable.

It is our understanding that cases filed on or after 7 July 2006 will be subject to amendment, extending the term from six years to seven. Such trade marks are distinguished by the fact that they have been issued with a "Trade Mark Registration Certificate" as opposed to a "Deposit Certificate". These amendments will also apply to applications which were pending as of 24 December 2012.

Whilst the above procedure is our current understanding, the EIPO will be issuing a list of registrations requiring amendment, and any registrations which are not included on the official list will have to be re-filed. Many uncertainties continue to exist, and the relevant requirements and deadlines may be subject to change.

Further information will be posted on our website as and when it has been received, but in the meantime, please do not hesitate to contact us if you have any questions.

28th February 2013

Ethiopia - Implementation of New Trade Mark Law

New Trade Mark Regulations were published in Ethiopia on 24 December 2012, giving full force and effect to the Trade Mark Registration and Protection Proclamation of 2006.

The new law extends the term of a registration to 7 years from the date of filing, renewable for like periods. Service marks are now registerable, and there is provision for publication and opposition proceedings. Priority may be claimed and the 8th Edition of the Nice Classification is being followed.

There is much uncertainty about the status of existing registrations and applications filed before 24 December 2012. We have been advised that existing registrations can no longer be renewed and must be re-filed under the new law. There is a "sunrise period" of 18 months enabling owners of existing registrations to do this. Whilst there is currently some uncertainty, we believe that the sunrise period began on 24 December 2012, and will therefore end on 24 June 2014.

There is also some uncertainty about the level of official fees to be charged under the new law, both for new applications and for the re-registration of existing cases. We are continuing to press the EIPO on these issues, and further information will be published on our website as soon as it is known.