Ethiopia is a land-locked country situated in East Africa. Sudan and South Sudan lie to the west of Ethiopia; Kenya to the south; Somalia and Djibouti to the east and Eritrea to the north and beyond these countries the Red Sea.
Ethiopia is a member of the following international agreements:
Trade marks may be registered in respect of goods and services. The law also provides for the registration of collective trade marks.
Although Ethiopia is not a member of the Paris Convention, the Proclamation expressly provides that a trade mark which is entitled to protection as a well-known trade mark under an international convention of which Ethiopia is a party, shall be protected if it is also well known in Ethiopia. The effect of this provision is not entirely clear.
The following types of trade marks are registrable:
A trade mark is defined to mean any visible sign capable of distinguishing goods or services of one person from those of other persons. A trade mark may include words, designs, letters, numerals, colours or the shape of goods or their packaging, or a combination thereof.
A collective trade mark means a trade mark distinguishing the goods or services of members of an association, which is the owner of the trade mark, from those of other undertakings.
The International Classification of Goods and Services (Nice Classification) is applied.
An application may cover any number of goods and/or services and any number of classes, but may cover only one trade mark.
The Proclamation expressly provides for priority to be claimed, provided the application in Ethiopia is filed within six months from the date of the first-filed foreign application.
An application for the registration of a trade mark is filed at the Ethiopian Intellectual Property Office (EIPO).
The following information and documents are required:
An application may cover only one trade mark, but may cover multiple classes.
The Ethiopian Intellectual Property Office (EIPO) examines the application as to form and substance. If the application is found to be acceptable, a notice inviting opposition is published in two newspapers in English and Amharic.
If no opposition is lodged (see the section on Opposition below), a registration certificate is issued.
Opposition may be lodged within 60 days of publication. The EIPO is empowered to grant extensions of time in terms of the legislation.
The period of protection is seven years from the date of registration. Renewal may be effected for consecutive periods of seven years upon payment of the required fees. Upon renewal, no changes may be made to the trade mark, except that goods or services may be removed from the list of goods and services.
Interim cautionary notices are published on the second and fourth anniversaries of the registration date.
A trade mark may in law be cancelled on the ground that it has not been used in Ethiopia for a continuous period of at least three years. The Proclamation requires use within three years of registration, but this is not applied in practice, and as such, there are no use requirements enforced at present.
The owner of a registered trade mark has the right himself to use the trade mark, or to authorise any other person to use the trade mark in relation to goods or services for which it has been registered.
The trade mark owner also has the right to preclude all others from using the trade mark or a mark resembling it in such a way as to be likely to mislead the public, or in circumstances likely to prejudice the interests of the owner.
Recognition is given to third party common law rights, inasmuch as a trade mark may not be registered if it is identical to, or confusingly similar to, a trade mark of another person that is well known or established by use in Ethiopia. A trade mark may also not be registered if it contains anything that is characteristic of another person’s protected literary or artistic rights.
Marking of goods with notification of registration, eg by use of the words ‘Registered Trade Mark’ or the symbol Ⓡ, is optional. Until the Proclamation is fully in effect, this is not a requirement.
Patent protection is obtainable by way of a patent granted on a national filing. A patent is granted in respect of an invention which entails patentable subject matter (see the section on Patentable subject matter below). A so-called patent of introduction (or importation) is granted to an invention which has been patented in another country where such patent has not yet expired (the period of protection being limited to 10 years). So-called minor (or petty) inventions may be protected by utility model certificates.
An invention is patentable if it is new, involves an inventive step and is industrially applicable.
The following inventions are not patentable:
The Proclamation provides for applications for a patent to be made by way of –
Patent applications are filed with the Ethiopian Intellectual Property Office (EIPO).
An invention is considered new if it is not anticipated by prior art. Prior art consists of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing date or, where appropriate, the priority date.
The Ethiopian Intellectual Property Office recognises the right to priority, and affords an application a priority claim on the basis of the first-filed foreign application, provided the Ethiopian application is filed within 12 months of the first filing.
A formal examination as well as a substantive examination are conducted. The substantive examination follows once all formal requirements have been complied with. Substantive examination can be avoided by a foreign applicant, by filing a copy of a patent granted on a corresponding application in another country to obtain a so-called patent of introduction (or importation).
The initial term of a patent is 15 years calculated from the filing date, with an option to renew the patent for a further period of five years subject to proof of adequate working in Ethiopia.
For a patent of introduction (or importation) the term expires with the foreign patent on which it is based, but the maximum term is 10 years.
An annual fee is payable as from the first anniversary of filing. A grace period of six months is allowed for the late payment of the annual fee. If the fee is not paid within the grace period, the patent lapses.
No express provision.
Working of the patented invention is required before the term of a patent is extended beyond 15 years. Proof of working is also required with annual renewal of a patent of introduction/ importation from the third year after it has been granted.
Furthermore, in order to avoid the grant of a compulsory licence, a patent owner has to work the patented invention in Ethiopia within a period of three years from the date of grant, or four years from the date of filing, whichever period expires last.
A utility model certificate protects minor inventions that possess novelty and are industrially applicable. Accordingly, inventions which involve small adaptations of existing technologies and which are new in Ethiopia and industrially applicable can be protected by way of utility model certificates.
A utility model certificate is granted for a period of five years, which period may be extended for a further five years provided that proof is submitted that the minor invention is being worked in Ethiopia.
At any time before grant or refusal, a patent application may be converted to an application for a utility model certificate, and vice versa.
Protection may be obtained for an industrial design by way of a design certificate.
Design protection does not extend to any feature of the design which serves only to obtain a technical result.
An industrial design is defined as any composition of lines or colours, or any three-dimensional form whether or not associated with lines or colours, provided that such composition or form gives a special appearance to a product of industry or handicraft.
Accordingly, a design comprises the original shape or configuration of an article which is industrially applicable. Designs which are contrary to public order or morality are excluded from protection. Design protection does not extend to any feature which serves only to achieve a technical result.
An application may be filed as a national application, in appropriate circumstances claiming priority from an earlier filed application.
Applications for design registrations are filed with the Ethiopian Intellectual Property Office (EIPO).
A priority claim is allowed provided the application is filed within six months of the first-filed foreign application.
A design must be new and possess practical applicability. A design is considered new when the sum total of its essential features is different from that of another design known in Ethiopia or in another country; and if the design has not been disclosed for more than one year prior to the date of the application, or the priority date (where applicable). A design is deemed to possess practical applicability if it is capable of serving as a model for repeated manufacture of products.
A utility model must be new in Ethiopia.
A design application is examined for formal requirements (to ensure that it is in the correct form), and for registrability (to ensure that it is new, ie not anticipated by a previously filed design, and has practical applicability).
No express provision is made for opposition.
The term of protection for a design is five years, renewable for two further periods of five years upon payment of the prescribed fee. The term of protection for a utility model is the same as for a design.