Ethiopia - Deadline for Re-Registration of Old Law Cases
On 24 December 2012, new Regulations were published in Ethiopia, bringing into force the Trade Mark Registration and Protection Proclamation 2006, dated 7 July 2006.
The Regulations have required owners of trade mark registrations filed under the old law, namely before 7 July 2006, to re-register their existing registrations. This applies to all cases filed prior to 7 July 2006, irrespective of whether they have been renewed since. The Ethiopian Intellectual Property Office (EIPO) has confirmed that the deadline for re-registering cases registered under the old law will be 18 June 2014. The EIPO will not be accepting applications for re-registration after that date.
The new law extends the term of trade mark registrations in Ethiopia from 6 to 7 years, and provision is made in the Regulations for the amendment of the term of registrations filed between 7 July 2006 and 24 December 2012. The EIPO has announced that it is now accepting applications for amendment of such registrations, but the deadline for amending such cases will also expire on 18 June 2014.
Finally, the EIPO has clarified the status of registrations which became due for renewal between 24 December 2012 and 18 June 2014. We are pleased to report that such registrations are now being renewed for a period of 7 years, without requiring amendment first.
If you have any queries, please do not hesitate to contact us.
7th February 2014
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.
30th January 2013