DOWNLAD REGULATION No. 273-2012 TRADEMARK REGISTRATION AND PROTECTION
COUNCIL OF MINISTERS REGULATION No. 273-2012
COUNCIL OF MINISTERS REGULATION ON TRADEMARK REGISTRATION AND PROTECTION
This Regulation is issued by the Council of Ministers pursuant to Article 5 of the Definition of Powers and Duties of the Executive Organs of the Federal Democratic Republic of Ethiopia Proclamation No. 691 /2010 and Article 47 of the Trademark Registration and Protection Proclamation No. 501 /2006.
PART ONE GENERAL
1. Short Title
This Regulation may be cited as the “Trademark Registration and Protection Council of Ministers Regulation No. 273/2012″.
2. Definitions
In this Regulation, unless the context otherwise requires:
1/ “Proclamation” means the Trademark Registration and Protection Proclamation No.50 112006;
2/ the definitions provided for under Article 2 of the Proclamation shall also be applicable to this Regulation;
3/ “Office” means the Ethiopia Intellectual Property Office;
4/ “agent” means a trademark agent registered by the Office in accordance with this Regulation;
5/ “registration owner” means a person who has registered a trademark with the Office;
6/ “use of a trademark” means attaching the trademark to the goods or packaging or labeling of the goods, displaying the trademark closely associated with the goods, placing the trademark in advertising or promotional material for the goods or services, or in any other way establishing a relationship between the trademark and the goods or the services;
7/ “publish” means publication in the Intellectual Property Gazette or a newspaper having nationwide circulation or by means of uploading at the Office web site;
8/ “person” means any natural or legal person;
9/ any expression in the masculine gender includes the feminine.
PART TWO COMMUNICATING WITH THE OFFICE
3. Written Communications
1/ Any communication with the Office shall be in writing.
2/ The Office’s action shall be based exclusively on the written records in the Office. Oral understandings, stipulations and communications may not be binding upon the Office.
4 Language for Documents
1/ Any document filed with the Office forming part of an application for registration of a trademark or any proceedings in the Office shall’ be in the Amharic or English language.
2/ Any document that is in a language other than Amharic or English shall be accompanied by a translation into Amharic or English.
3/ The Office may refuse to accept any translation which, in its opinion, is inaccurate and return the document to the applicant for correction.
4/ Where a document contains a word in characters other than Amharic or Latin, the Office may require a transliteration or translation of such word and the statement regarding a transliteration or translation shall state the language to which the word belongs and shall be signed by the applicant or the applicant’s agent.
5. Addressing Communications and Identification of Subject Matter
1/ Any written communication with the Office shall properly express the name and address of the Office.
2/ A written communication shall, as may be appropriate, identify the trademark, the name and address of the applicant, the filing date, the application or the proceeding number, the registration owner, the registration number and the registration date.
3/ The Office may return to the sender any document that does not comply with sub-article (1) and (2) of this Article.
4/ If a document returned pursuant to Article 4 (3) of this Regulation or sub-article (3) of this Article is rectified and re-submitted to the Office:
a) within 30 days from the date of return, it shall be treated as received on its former dale of submission; or
b) after a delay of more than 30 days, it shall be treated as received on the actual date of re-submission.
6. Receipt and Marking of Documents
1/ The Office shall stamp the date and hour of receipt on a document that is filed and acknowledge receipt of same.
2/ When the Office accepts the filing of documents by means of the electronic media in accordance with directive issued for such purpose, the time and date of receipt registered by the electronic device shall be considered the official time and date of receipt of the document by the Office.
3/ The Office shall assign a reference number to al application it receives and mark each document constituting the application with the assigned reference number.
41 The reference number assigned to an application under sub-article (3) of this Article shall be referred to in all subsequent communication: concerning the application.
7. Filling Documents by Mail
1/ A document sent to the Office via express an< registered postal mail five days before the expiry of a specified deadline shall b. considered as being timely filed despite it is received by the Office after the deadline.
2/ The provision of sub-article (1) of this Article may not apply with regard to the application for registration and renewal of trademarks.
8. Documents not Returnable
1/ Unless expressly provided in the Proclamation this Regulation or directive issued by the Office documents submitted to the Office may not b. returned; provided, however, that copies 0 1 same document may be given upon written request and payment of the applicable fee.
2/ Any person who has submitted an original document to the Office may take back the original one by replacing the copy thereof.
PART THREE APPLICATION FOR REGISTRATION OF TRADEMARK
9. Submission of Application
An application for registration of a trademark shall be accompanied by the following documents in addition to those specified under Article 8 of the Proclamation:
1/ if the applicant is a legal person, copy of the certificate of its registration and evidence authorizing the person who has signed the application to represent the legal person;
2/ if the application is filed through an agent, the certificate of registration of the agent and a duly authenticated power of attorney;
3/ a brief written description of pictures, if the trademark is pictorial or includes pictorial elements;
41 where the trademark contains characters other than Amharic or Latin, or numerical expressions other than Amharic, Arabic or Latin numerals their transliteration into Amharic or Latin characters and Arabic numerals;
5/ if the applicant claims a combination of colors as a trademark or distinctive feature of the trademark, three copies of the trademark in color and the explanation that the applicant claims a combination of color as the trademark or as a distinctive feature, which includes a description of position of appearance of each color in the trademark.
10. Application for Registration of Collective Trademark
An application to be submitted for the registration of a collective trademark shall, in addition to those specified under Article 9 of this Regulation, be accompanied by two copies of a statute governing the use of the trademark.
11. Graphical Representation of Trademark
1/ The graphical representation of a trademark shall be the exact representation of the trademark used or intended to be used In connection with the applicant’s goods or serv ices.
2/ If the application is lodged in accordance with
Article 13 of this Regulation seeking priority, the graphical representation shall be the exact representation of the trademark as it appears in the registration certificate of a trademark duly registered in the country of origin of the applicant.
12. Amendment of Application
II An applicant may request the Office in writing at any time before the issuance of notice of acceptance for registration and publication for call of opposition under Article 25(1) of this Regulation to amend his application.
2/ An application submitted under sub-article (I) of this Article shall be rejected if the amendment:
a) substantially alters the character or pictorial representation of the trademark shown in the original application; or
b) is to make additions in the list of goods or services included In the original application.
3/ Any applicant dissatisfied with the decision of the Office on rejection of application in accordance with sub-article (2)(a) of this Article, may appeal to the court having jurisdiction within 60 days after the receipt of the decision.
13. Priority Right
For the purposes of establishing priority right in accordance with Article 10 of the Proclamation, the date an earlier application filed in a foreign country shall be treated as the date an application submitted to the Office for registration of a trademark if:
1/ the earlier application was duly filed In a country that is a party to the Paris Convention for the Protection of Industrial Property or in a country that grants a right of priority to an applicant that has equivalent effect to the right of priority provided for by the Paris Convention; and
2/ the applicant submits to the Office, within 90 days from the filing date of the application for registration of the trademark, a certified copy of the earlier application or a priority certificate issued by the country where the previous application was filed.
PART FOUR EXAMINATION OF APPLICATION
14. Formality Examination
1/ The Office shall, undertake forma lily examination on the application submitted to verify its compliance with the requirements of Article 8 of the Proclamation and Article 9 of this Regulation.
2/ Where the Office finds that the requirements of Article 8 of the Proclamation and Article 9 of this Regulation are not fulfilled, it shall notify the applicant, in writing, to file the necessary correction within 90 days from the date of the notification,
3/ If the applicant does not file the required correction within the time limit, the Office shall reject the application and the applicant shall ‘ forfeit the fees paid, if any.
4/ Where the Office finds that the requirements of . Article 8 of the Proclamation and Article 9 of this Regulation are fulfilled, it shall acknowledge, by a notice to the applicant, acceptance of the application for examination,
15. Index of Pending Applications
1/ The Office shall prepare and maintain an Index of pending applications which meet the formality requirements pursuant to Article 14 of this Regulation.
21 The Index shall include:
a) the name and address of each applicant;
b) a description or reproduction of each applied-for mark;
c) the goods or services each application covers and their classification number:
d) t/;” date and time when each application was filed; and
e) the number that the Office assigned to each application.
16. Substantive Examination
1/The Office shall conduct substantive examination on the application for .registration of a trademark to decide on:
a) eligibility of the trademark for registration in accordance with Article 5 of the Proclamation; or
b) refusal of registration in accordance with Article 6 or Article 7 of the Proclamation.
2/ The substantive examination of an application under sub-article (1) of this Article shall be carried out:
a) by evaluating the trademark in accordance with the directive issued by the Office for such purpose; and
b) through search of the records of the Office for registered trademarks and pending applications.
3/ Any person, before filing an application for registration of a trademark, may apply for search to know whether the trademark applied for is registered or not upon payment of the fee prescribed in the Schedule attached hereto.
17. Applications for Registration of Similar Trademarks
When two or more applications are submitted to the Office on the same day for the registration of similar trademarks for identical or similar goods or services and there is no priority right applicable to any of them:
1/ the Office may treat the trademark used in Ethiopia first as an earlier trademark for the purpose of Article 7 of the Proclamation; or
2/ if neither trademark has been used in Ethiopia, the trademark applied first in terms of time shall be treated as an earlier trademark for the purpose of Article 7 of the Proclamation.
18. Action of the Office
If the Office, as the result of the findings of the substantive examination:
1/ requires the applicant to satisfy certain additional requirements in accordance with Article 5 of the Proclamation; or
2/ concludes that the trade mark is inadmissible for registration pursuant to Article 6 or 7 of the Proclamation; it shall notify same to the applicant, in writing, together with the reasons thereof.
19. Response to Action of the Office
1/ The applicant sha1l respond to the Office within 90 days from the date of receipt of the notice in accordance with Article 18 of this Regulation.
2/ The applicant in his response may:
a) take proper measure to satisfy the specified additional requirements or to overcome the grounds impeding the registration; or
b) request amendment to the application, subject to the limitation provided for in this Regulation, with a view to taking the measures referred to in paragraph (a) of this sub-article.
3/ The Office shall re-examine the application upon receipt of the applicant’s response.
20. Extension of Time to Respond
1/ The time limit stipulated in Article 19 of this Regulation may be extended, if the applicant requests, in writing, by providing sufficient reasons for the extension before the expiry of the time limit and upon payment of the fee prescribed in the Schedule attached hereto.
2/ The time limit may be extended, pursuant to sub-article (I) of this Article, for a period of consecutive 90 days following the expiry of the applicable response period; provided, however, that such extension may not be allowed for more than twice.
31 The Office shall notify its decision to the applicant in wri ting whether the extension is granted or not.
21. Rejection of Application
1/ An application for registration of a trademark shall be rejected by the Office if the re-examination of the application upon receipt of the applicant’s response under Article 19 of this Regulation shows that the applicant fails to fully satisfy the specified additional requirements or to overcome the grounds impeding the registration.
2/ Decision of the Office under sub-article (I) of this Article shall be communicated to the applicant in writing stating the reasons for the rejection
3/ Any applicant whose application for registration of a trademark is rejected may appeal to the court having jurisdiction within 60 days from receipt of the decision of the Office.
22. Applicant Action after Rejection
Prior to the expiry of the period of appeal on the rejection, the applicant may take measures to satisfy the outstanding requirements or overcome the grounds imped ing the registration or amend the application to take such measures.
23. Abandoned Application
1/ The Office shall treat an application as abandoned if:
a) the applicant expressly withdraws the application by a written notice at any time during the proceeding;
b) the applicant fails to respond to the decision of the Office before the expiry of the response period or authorized extension or to take measures to fully satisfy outstanding requirements or to overcome grounds impeding registration or amend the application with a view to taking such measures;
c) the applicant fails to appeal to the court having jurisdiction against the decision of the Office before the expiry of the appeal period; or
d) the applicant’s appeal is unsuccessful.
2/ When the application is abandoned, the Office shall mark the file “ABANDONED” and place it in the records of abandoned files.
24. Exclusion from Being Examiner
Any person assigned by the Office to examine an application for registration of a trademark shall, on his own initiative or upon the request of the applicant or any other interested party, be excluded from exercising his function where, he:
1/ is a close relative of the applicant or his agent;
2/ has an interest in the application for registration of the trademark; or
3/ has such other kinds of relations with the applicant or his agent that might influence the impartial examination of the application.
PART FIVE
OPPOSITION TO REGISTRATION OF TRADEMARK
25. Notification of Eligibility of Trademark for Registration
If the Office determines that the trademark applied for is eligible for registration following:
1/ the examination or re-examination of the application in accordance with Article 17 or Article 19(3) of this Regulation; or
2/ the measures taken by _the applicant to fully satisfy the outstanding requirements or to overcome the grounds impeding the registration pursuant to Article 22 of this Regulation;
it shall arrange for publication of the trademark for opposition and notify the applicant the acceptance of the application for registration purpose and publication for call of opposition.
26. Publication of Notice for Call of Opposition
1/ The-Office shall publish, at the expense of the applicant pursuant to Article 12 of the Proclamation, a notice for call of opposition to the registration of the trademark that includes:
a) the applicant’s name and address;
b) the graphic representation of the trademark;
c) the goods or services the application covers and their classification number;
d) the filing date of the application or right of priority date, as may be appropriate;
e)the application number;
f)the disclaimer, if any; and
g)the name and the address of the applicant’s agent, if applicable.
2/ If the applicant fails to pay the amount of money required to cover the expenses of publishing the notice for call of opposition, within 60 days from the date of receipt referred to in Article 25 of this Regulation, the application for registration of the trademark shall be considered as abandoned and be treated in accordance with Article 23(2) of this Regulation.
27. Opposition to Registration of Trademark
1/ Any person who intends to oppose the registration of a trademark may submit his statement of opposition to the Office by filling the form prescribed by the Office for such purpose.
2/ The statement of opposition shall be accompanied by the following:
a) evidences supporting the grounds of opposition;
b) proof of payment of the prescribed fee;
c) if the party opposing the registration is a legal person, copy of the certificate of its registration and ‘evidence authorizing the person who has signed the statement of opposition to represent the legal person;
d) if the statement of opposition is filed through an agent, the certificate of registration of the agent and a duly authenticated power of attorney.
28. Time for Filing Opposition
1/ A statement of opposition shall be submitted within 60 days from the date of publication of the notice for call of opposition.
21 The Office may extend the time of filing a statement of opposition for additional 60 days if the applicant submits written application for extension before expiry of the time specified in sub-article (I) of this Article upon payment of the fee stipulated in the Schedule· attached hereto.
31 The Office shall communicate to the applicant the extension of time for filing opposition granted under sub-article (2) of this Article.
29. Decision on Opposition
1/ The Office shall send to the applicant the copy of the statement of opposition and documents accompanying the statement of opposition within 30 days from the date of filing the statement of opposition.
2/ The Office shall notify the applicant with the period fixed for submitting response to the opposition in accordance with Article 13(3) of the Proclamation. Such period may not be less than 90 days from the date the applicant is served with the copy of the statement of opposition in accordance with sub-article (I) of this Article.
3/ If the applicant fails to respond within the time limit specified under sub-article (2) of this Article, the application for registration of the trademark shall be considered as abandoned and be treated in accordance with Article 23(2) of this Regulation.
4/ The Office shall render its decision on the opposition pursuant to Article 13(4) of the Proclamation within 90 days from the date of filing the response to the opposition.
5/ The decision of the Office shall be effective if neither of the parties appealed to the court having jurisdiction in accordance with Article 30 of this Regulation.
30. Appeal
Any party dissatisfied with the decision of the Office with regard to an opposition to the registration of trademark may, within 60 days from receipt of the decision, appeal to the court having jurisdiction in accordance with Article 17(2) of the Proclamation.
PART SIX REGISTRATION PROCEDURE
31. Registration of Trademark
1/ The Office shall, if no opposition is filed or is successful, send notice to the applicant stating the eligibility of the trademark for registration and requesting payment of the fee stipulated in the Schedule attached hereto.
2/ The Office may, in the notice referred to in sub article (1) of this Article, include a request, as a condition of registration, that the applicant disclaim any exclusive right to the elements in the trademark that are not eligible for protection pursuant to Article 5(3) of the Proclamation.
3/ The Office shall register the trademark if the applicant, within 90 days after being served with the notice referred to in sub-article (I) of this Article:
a) pays the appropriate fee; and
b) accepts the disclaimer requested pursuant to sub-article (2) of this Article.
4/ If the applicant fails to pay the appropriate fee or to accept the condition of disclaimer, within the time limit prescribed under sub-article (3) of this Article, the application for registration of the trademark shall be considered as abandoned and be treated in accordance with Article 23(2) of this Regulation.
32. Certificate of Registration
1/ The Office shall issue a certificate of registration to the applicant upon registering a trademark pursuant to Article 31 of this Regulation.
2/ A certificate of registration to be issued pursuant to ·sub-article (I) of this Article shall include the following:
a)reproduction of the trademark;
b) the registration date and number;
c) the owner’s name, address and nationality;
d) the filing date of the application or right of priority date, as the case may be;
e) the goods or services the registration covers and their classification number;
f) the validity period of the registration;
g) the name and address of applicant’s agent, if any; and
h) any disclaimer.
33. Notification of Registration
1/The Office shall, in accordance with Article 16 of the Proclamation, notify the registration which contains same information as it appears on the registration certificate referred to in Article 32 (2) of this Regulation.
2/ The owner of a trademark registered by the Office may publicize the registration by displaying the trademark in close association with the symbol ®.
34. Substitute Certificate of Registration
1/ Where a certificate of registration is lost or damaged, the registration owner may apply to the Office for issuance of a substitute certificate.
2/ The Office shall, upon publication of notice, at the expense of the applicant, with regard to a lost certificate or the return of a damaged certificate, and upon payment of the fee prescribed in the Schedule attached hereto, issue a substitute certificate which contains the information stated in the previously issued certificate.
35. Register of Trademarks
1/ The Office shall organize and maintain a Register of Trademarks,
2/ The Office shall enter in the Register information about:
a) trademarks registered by the Office;
b) renewed, amended, cancelled and invalidated trademark registrations; and
c) transfer of ownership and license contracts concerning registered trademarks,
31 Apart from other additional information the
Office enters in the Register of Trademarks as provided by the Proclamation and this Regulation, information about a registered mark
in the Register of Trademarks shall be the same as shown on the certificate of registration,
36. Classification System for Trademarks
The Office shall register trademarks ·in accordance with the applicable international classification of goods and services with respect to registration of marks,
PART SEVEN
RENEWAL AND AMENDMENT OF REGISTRATION OF TRADEMARK
37. Submission of Application for Renewal
An application to renew the registration of a trademark shall be submitted to the Office, within the time limit specified in Article 25(3) of the Proclamation, by filling the form prescribed by the Office for such purpose and shall be accompanied with proof of payment of the appropriate application fee.
38. Acceptance or Refusal of Renewal Request
1/ If the Office, upon examination of an application for renewal, finds it acceptable, it shall, upon payment of the fee stipulated in the Schedule attached hereto, renew the registration of a trademark and issue certificate of renewal to the registration owner
2/ If the Office finds that an application for renewal is incomplete or incorrect, it shall refuse the renewal and notify the registration owner of such refusal and the reasons for refusal
3/ The Office shall, after renewal, publish notice of the renewal which shall contain the same information as it appears on the renewal certificate.
39. Relinquishment of Registration
1 / The registration of a trademark shall be deemed to be relinquished on the expiry of its period of validity if the registration owner fails:
a) to timely file an application of renewal or to effect the applicable fee;
b) to fully satisfy the conditions for acceptance of the application for renewal specified in the notice referred to in Article 38(2) of this Regulation within 90 days from receipt of the notice; or
c) to obtain a decision of the court having jurisdiction that reverses the decision of the Office upon lodging an appeal within 60 days from receipt of the notice referred to in Article 38(2) of this Regulation.
2/ The Office may grant an extension period of additional 90 days to fully satisfy the conditions for acceptance of the application for renewal specified in the notice referred to in Article . 38(2) of this Regulation, if the registration owner:
a) files a written request, prior to the expiry of the period specified under sub-article (I )(b) of this Article, for additional time extension that shows, to the satisfaction of the Office, good cause for the failure to take the required action within the specified period; and
b) pays the fee stipulated in the Schedule attached hereto.
40, Amendment of Registration
1/ An amendment to the registration of a trademark may be allowed:
a) to correct a mistake in the registration;
b) to cancel specified goods or services and their classification number covered by the registration;
c) to register a disclaimer; or
d) to make other minor changes in. the registration.
2/ An application for amendment of the registration of a trademark shall be submitted to the Office by filling a form prescribed by the Office for such purpose and accompanied by:
a) proof of payment of the fee stipulated in the Schedule attached hereto, except in the case of an amendment to correct a mistake caused by the fault of the Office;
b) in the case of amending the trademark, three copies of a graphical representation of the amended version; and
c) the original certificate of registration.
3/ If the Office, upon examining the application, finds that the proposed amendment IS appropriate, it shall enter the changes in the Trademark Register and issue to the registration owner a new certificate of registration based on the amendment; provided, however, that if the amendment is to correct a mistake in the registration, the amended registration shall have the same force and effect as if it had been originally registered in the corrected form.
4/ The Office shall publish notice of amendment of registration which contains same information as it appears on the certificate of registration referred to in sub-article (3) of this Article.
41. Amendment of Statutes Governing Use of Collective Trademark
1/ The Office shall review amendments to the statutes governing the use of a collective trademark filed for registration pursuant to Article 22( I) of the Proclamation and determine whether the amendments contain any provision contrary to public order or morality.
2/ Publication of the amendments pursuant to Article 22(2) of the Proclamation shall contain:
a) the name of the owner of the registered collective trademark;
b) the collective trademark;
c) the goods or services covered by the collective trademark;
d) the registration number and date;
e) a copy of the amended statutes; and
f) the time limit for filing opposition and observations; provided, however, that such period may not be less than 60 days from the publication dale
31 The Office shall register the amended statutes and publish notice of registration where it determines that there are no:
a) provisions in the amendments contrary to public order or morality; and
b) oppositions or observations to justify refusal of registration.
4/ If the Office refuses registration of the amended statutes, it shall notify the register owner of its decision and the reasons thereof.
5/ The register owner who is dissatisfied with the decision of the Office may appeal to the court having jurisdiction within 60 days from receipt of the decision.
PART EIGHT RENUNCIATION, CANCELLATION AND INVALIDATION OF REGISTRATION
42. Renunciation of Right
1/ An application for registration of renunciation of right on a registered trademark pursuant to Article 34(1) of the Proclamation shall be submitted by filling a form prescribed by the Office for such purpose’,
2/ If the trademark has been transferred by license contract and such transfer is entered into the Register of Trademarks, the application referred to in sub article (1) of this Article shall, pursuant to Article 34(2) of the Proclamation, be accompanied by the written declaration of the licensee consenting to the renunciation.
43. Cancellation or Invalidation of Registration
II An application requesting the cancellation or invalidation ‘of registration of a trademark pursuant to Article 35 or Article 36 of the Proclamation shall be made in the fro prescribed by the Office for such purpose and be accompanied by supporting documents and proof of payment of the fee stipulated by the Schedule attached hereto.
21 The Office shall send to the registration owner the application and supporting documents submitted to it in accordance with sub article (1) of this Article together with a notice stating the time limit for submission of a reply; provided, however, that such time limit may not be less than 60 days from the date of receipt of the notice.
31 If the Office. on its own initiative, determines the existence of a ground to justify invalidation of the registration of a trademark, it shall communicate same, in writing, to the registration owner and solicit him to reply within the time limit prescribed in sub-article (2) of this Article.
41 If the registration owner fails to respond in accordance with sub-article (2) or (3) of this Article within the prescribed period, the grounds alleged to justify cancellation or invalidation of the registration shall be deemed to be admitted and the Office shall decide to cancel or invalidate the registration.
5/ If the registration owner submits its reply in accordance with sub-article (2) or (3) of this Article within the prescribed period, the Office shall render its decision upon properly examining the issues raised and the evidences produced.
6/ Copies of the decision of the Office rendered pursuant to sub-article (4) or (5) of this Article shall be sent to the registration owner and, as may be applicable, to the person who has requested the cancellation or invalidation of the registration.
7/ I f the registration owner fails :
a) to lodge an appeal with the court having jurisdiction within 60 days from the date of receipt of a copy of the decision of the Office to cancel or in validate the registration of a trademark: or
b) to obtain a decision of reversal by the court:
a notice of the cancellation or invalidation of the registration shall be entered into the Register of Trademarks and shall be published.
PART NINE
TRANSFER OF OWNERSHIP AND LICENSE CONTRACT
44, Registration of Transfer of Ownership or License Contract
1/ An application for the registration of transfer of ownership or license contract of a registered trademark shall be made by filling the form prescribed by the Office for such purpose and be accompanied by a copy of the transfer agreement or the license contract and proof of payment of the applicable fee prescribed in the Schedule attached hereto.
2/ The Office shall, upon receipt of duly completed application, enter into the Register of Trademarks information containing at least the following particulars and publish notice of !he registration:
a) the full name, address and the nationality of the transferee or the licensee;
b) the list of goods or services and their classification subject to the ownership transfer or license contract;
c) the geographic area where the trademark is to be used in accordance with the transfer agreement or license contract;
d) date of registration of the transfer or license contract.
3/ If the transfer of ownership or license contract is for only certain goods or services covered by the registration of the trademark, the Office shall issue a new certificate of registration 10 the transferee or an evidence to the licensee by listing the goods or services covered by the transfer or license contract.
45. Registration of Cancellation of License Contract
1/ An application for the registration of cancellation of a license contract of a registered trademark shall be made by filling the form prescribed by the Office for such purpose and be accompanied by a copy of the document cancelling the license contract and proof of payment of the applicable fee prescribed in the Schedule attached hereto.
2/ The Office shall, upon receipt of duly completed application, enter into the Register of Trademarks information about the cancellation of the license contract and publish notice of cancellation of the registration.
PART TEN
DIVISION, MERGER AND SERIES OF MARKS
46. Division of Application
1/ An applicant may file a request, at any time before the registration of a trademark, using the form prescribed by the Office for such purpose, for a division of his application into two or more separate applications.
2/ The applicant shall indicate for each division the specification of goods or services.
3/ Each divisional application shall be treated as a separate application for registration with the same filing date as the original application.
4/ Where the request to divide an application is filed after publication of the application, any opposition to the original application shall apply to each divisional application .
47. Merger of Separate Applications
1/ An applicant who has made separate application for registration of a trademark may, at any time before preparation for the publication of any of the applications have been completed by the Office, file a request, using the form prescribed by the Office for such purpose, to merge the separate applications into a single application.
2/ The Office shall accept the request made under sub-article (I) of this Article and merge the applications into a single application if all the applications which are the subject of the request for merger:
a) are in respect of the same trademark;
b) bear the same date of application; and
c) are, at the time of the request, in the name of the same person.
48. Merger of Separate Registrations
1/ The owner of two or more registrations of a trademark may request the Office, by filling the form prescribed by the Office for such purpose, to merge them into a single registration.
2/ The Office shall accept the request made under sub-article (I) of this Article and merge them into a single registration if the registration is in respect of the ‘same trademark.
3/ Where any registration of a trademark to be merged under sub-article (I) of this Article is subject to a disclaimer, the merged registration
shall also be subject to the same limitation.
4/ The date of registration of the merged registration shall, where the separate registrations bear different dates of registration, be the latest of those dates.
49. Registration of Series of Trademarks
1/ The owner of a series of trademarks may apply to the Office, by filling a form prescribed by the Office for such purpose, for their registration as a series in a single registration.
2/ A graphic representation of each trademark claimed to be in the series shall be included in the application made under sub-article (I) of this Article.
3/ The Office shall, if satisfied that the marks constitute a series, accept the application and register the! accordingly.
50. Division of Application for Registration of Series of Trademarks
1/ A person who applied for registration of a series of trademarks pursuant to Article 49 of this Regulation may, at any time before preparations of publication have been completed by the Office, request the division of the application into two or more separate applications by filling a form prescribed by the Office for such purpose.
2/ If the conditions provided under Article 46(2) of this Regulation are met, the Office shall accept the request and divide the application accordingly.
PART ELEVEN TRADEMARK AGENTS
51. Registration
1/ Any person who wants to act as agent of trademark owners in connection with proceedings of registration and protection of trademarks shall be registered as a trademark agent.
2/ An applicant who wants to be registered by the
Office as a trademark agent shall:
a) reside in Ethiopia;
b) be at least 21 years of age;
c) be an attorney authorized to practice law in Ethiopia, or be a person who has acquired at least middle level qualification in the relevant field of study, has a work experience in the area of trademark for not less than three years and has passed the competence assessment evaluation administered by the Office; and
d) have no record of conviction for criminal offence or professional misconduct by the court having jurisdiction or relevant regulatory body.
3/ Any person fulfilling the requirements stipulated from paragraph (a) to (d) of sub article (2) of this Article may take trademark agents’ competence assessment, upon payment of the fee prescribed in the Schedule attached hereto.
4/ The Office shall conduct trademark agents’ competence assessment twice a year in accordance with the time schedule specified by its directive.
52. Certificate of Registration
1/ Where the Office ascertains that an application complies with the requirements specified under Article 5 I of this Regulation, it shall enter the applicant’s name in the Register of Trademark Agents and issue a certificate of registration, upon payment of the fee prescribed in the Schedule attached hereto.
2/ The certificate of registration shall include the following particulars:
a) the full name, nationality and residential and business addresses of the trademark agent;
b) the date of registration; and
c) name and signature of the issuing officer.
3/ A certificate of registration of a trademark agent shall be valid for one year from the date of Issuance.
53. Renewal of Registration
1/ An application for renewal of registration of a trademark agent shall be submitted to the Office, within 30 days after the expiry of its validity, by filling the form prescribed by the Office for such purpose.
2/ Where the Office receives an application for renewal, it shall, subject to the requirements stipulated under paragraph (a) and (d) of Article 5 I (2) of this Regulation and upon payment of the fee prescribed in the Schedule attached hereto, renew the registration and issue a certificate of renewal.
31 Where an application for renewal is not submitted within the period specified under sub article (I) of this Article, the registration may be renewed if the application is submitted within the next 30 days and upon payment of additional fee as determined pursuant to Article 56(3) of this Regulation.
54. Publication of List of Registered Trademark Agents
The Office shall annually publish the list of registered trademark agents,
PART TWELVE MISCELLANEOUS PROVISIONS
55. Access to Information
Any interested person may, upon payment of the fees prescribed in the Schedule attached hereto, request in writing:
1/ for search of a trademark and to obtain a search report; or
2/ to inspect the Register of Trademarks or other records and documents made public by the Office and to obtain copies thereof
56. Fees
1/ Payments of fees to be made for the services of the Office pursuant to the Proclamation and this Regulation shall be effected in accordance with the rates prescribed in the Schedule attached hereto
2/ Where the trademark subject to a service covers more than one class of goods or services the fee shall include additional payment of 50% of the fee stipulated in the Schedule with respect to each subsequent class of goods or services.
3/ In the case of late renewal of any registration after the expiry of the regular renewal period specified under the Proclamation or this Regulation, additional payment of fee equivalent to 50% of the applicable fee stipulated in the Schedule attached hereto shall be required .
57. Computation of Deadlines
When a deadline specified in the Proclamation or this Regulation falls on a day other than a working day, the next working day hereto shall be taken as the deadline.
58. Transitory Provisions
1/ Pending applications for trademark registrations prior to the effective date of this Regulation shall be treated in accordance with the previously existing procedures; provided, however, that the fees prescribed in the Schedule attached hereto shall be applicable with respect to outstanding payments of fees.
2/ Trademark agents registered prior to the effective date of this Regulation shall be reregistered upon fulfilment of the requirements provided under this Regulation within the period determined by directive of the Office.
59. Power to issue Directive
The Office may issue directives necessary for the implementation of the Proclamation and this Regulation.
60. Effective Date
This Regulation shall enter into force on the date of publication in the Federal Negarit Gazette.
Done at Addis Ababa, this 24′h day of December, 2012
HAILEMARIAM DESSALEGN
PRIME MINISTER OF THE FEDERAL DEMOCRATIC REPUBLIC OF ETHIOPIA
Filed under: Intellectual Property, law, Legislation
