By: Atkilit Bekele and Lea Mehari
With over 100 million population and with one of fastest growing economies, Ethiopia has become a go to place for Foreign Direct Investment (FDI).
When investing in Ethiopia one of the issues to consider is the local registration of your trademark.
Ethiopia is not a member of major international treaties concerning trademarks such as the Madrid Agreement Concerning the International Registration of Marks, Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Convention Establishing the World Intellectual Property Organization, World Trade Organization (WTO),Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) and the Lusaka Agreement on the creation of the African Regional Intellectual Organization (ARIPO).
As such, the governing law on the protection of rights over a trademark in Ethiopia is the Trademark Registration and Protection Proclamation No. 501/2006 and Trademark Registration and Protection Council of Ministers Regulation No.273/2012 (Trademark Laws).
Under the Trademark Laws, trademark protection is offered only when the owner obtains a trademark registration certificate from the Ethiopian Intellectual Property Office (EIPO).
In recent years some local cafes, restaurants and other service providers have started using the names of international or western brands by registering the trademarks in Ethiopia as their own. This creates an obstacle for international brand owners from registering their trademarks in Ethiopia if it is already registered by a local entity at the EIPO.
There is a limited legal loop-hole that refuses the registration of trademark of famous international brands, by persons other than the owners of the trademark internationally. As such the international brand will be required to prove that the trademark has as a result of its use, become well-known in Ethiopia. In determining whether a trademark is well-known in Ethiopia due regard shall be given to the knowledge of the trademark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trademark. The owner of a well-known trademark can institute any action against any person in respect of the unlawful use of the well-known trademark. This has expanded the protection of trademark rights in Ethiopia.
Foreign Investors or entities doing business in/with Ethiopia should not, however, place their full trust on this general protection and fail to register their trademark. A well-known brand will be protected, without registration at the EIPO, provided that Ethiopia is a party to an international convention protecting the right of the international owner of the trademark. As stated above, Ethiopia is not yet a signatory to any international agreements that protect registered trademarks internationally, therefore, the protection offered may not be as strong as is provided in the proclamation.
Further, foreigners who have no legal existence in Ethiopia are allowed to register their trademark in Ethiopian and license it or make it part of a franchise agreement with a local business.
Therefore, we recommend that owners of trademarks to take a step forward and register their trademarks at the EIPO to guarantee the protection of their rights.