Ethiopia is a country located in the north-eastern part of Africa. It is bordered by South Sudan and the Sudan to the west, Eritrea to the north, Djibouti and Somalia to the east and Kenya to the south. Ethiopia's population of approximately 84 million makes it one of the largest markets in Africa. The major sources of Ethiopian imports are China, Saudi Arabia, India, UAE, Japan, Italy, Turkey, and United States.
Which Products are vulnerable?
Products from the countries of major sources of Ethiopian import, like China, Saudi Arabia, India, UAE, Japan, Italy, Turkey, and United States are vulnerable. So products which acquired reputation and acceptance in the market are the ones relatively under high exposure to counterfeit. Trademark infringers usually target these products to exploit their comparative market advantage and higher profit margin due to the cheap counterfeit products. So the usual approach of the trademark infringers is not producing it in Ethiopia; rather importing it from Asian countries like China, India…etc. Even famous brands of a Chinese/Indian company can be counterfeited by other trademark infringers from the same country and be imported in Ethiopia.
Although, well-known brand products are being imported and distributed in Ethiopia once these genuine products get acceptance and reputation, fake products with the same trademark/brand flood into the market in massive scale. For instances we can take the few examples of the American Energy Management Company (APC) claims of prevalence of counterfeit UPS (Uninterruptible Power Supply) products that carry APC’s Brand.
We can also see the case of “fake cosmetics Industry in Ethiopia. Much of these fake products are imported with the intention of convincing the consumer that they are purchasing brand name items at much cheaper prices. As a result it has become very difficult to identify the genuine product from the fake ones. In terms of quality the forged product has very poor quality; yet people do not identify the quality so easily and usually creates confusion on the market.
Legal structure protecting trademarks in Ethiopia
The legal structure protecting Trade marks in Ethiopia is based on Proclamation no 501/2006 on Trade Mark Registration and Protection and Regulation no 273/2012. Ethiopia is not a member of the WIPO standard setting treaties such as the Paris convention. However the proclamation seems to protect well-known trade mark under an international convention. Even though the trademark 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, it will be difficult to objectively determine which brand is known enough to avail from such protection.
So the recommended and reliable approach to protect your trademark in Ethiopia is registering your trademark at the Ethiopian Intellectual Property Office. Thus we highly recommend you to register and protect your brand in Ethiopia thereby preserving your ownership right in Ethiopian jurisdiction and keeping out “fake” products from entering the Ethiopian jurisdiction.
Enforcement of rights: Penalties and Redress
If your trademark is registered in Ethiopia and your trademark/brand is infringed, you have a
- right to get an administrative and legal measure of injunction against the importation of infringement products
- a right to request for Compensation for the damages sustained;
- a right to request for Criminal Sanction on the infringers
Such trademark holder shall have the right to compel the competent court to order effective provisional measures:
- In accordance with civil and criminal procedure laws, to prevent the entry into the channels of commerce of import and export goods after completing customs formalities.
- Pass an injection to the defendant to stop the infringement of right and order to pay compensation to the damage infliction on the person having the registered trademark.
The Customs Authority on the basis of any relevant evidence presented by the trademark right holder may seize and destroy goods which are subject to the alleged infringement of the applicant’s right.
In addition to the above mentioned provisional administrative measure, the trademark owner can request compensation for the damage incurred. Accordingly the court shall award damages to the plaintiff upon ascertaining that there was an infringement of his rights. Such amount shall be equal to the net profit derived by the defendant from the use of the trademark or the amount of royalty the defendant would have paid had he been a licensee to such a trademark whichever is the higher amount.
Further the trademark holder can institute a criminal proceeding on the infringers. As per Ethiopian law “A person who intentionally violates a right protected under the Ethiopia intellectual property office will be punished with rigorous imprisonment of a term not less than 5 years and not more than 10 years. A person who violates a registered Trademark by gross negligence will be punished with gregarious improvement of a term not less than 1 year and not more than 5 years.”
Finally, once again, we highly recommend you to register and protect your brand in Ethiopia thereby preserving your ownership right in Ethiopian jurisdiction and keeping out “fake” products from entering your market share in Ethiopian jurisdiction.
If you have an additional question or comment or need to get a practical legal support in this regard please Contact us.
“Copyright © 2003-2013 Fikadu Asfaw and Associate Law Office”
- Have You Heard About The Newly Issued Trademark Law Of Ethiopia?
- Why do you need to protect your Trademark in Ethiopia?
- Trademarks and their protection as per the Ethiopian legal system
- Enforcement of Registered Trademark Rights under Ethiopian law
- Well known trademarks and Ethiopian law
- Trademark Registration Procedures under Ethiopian Law
- How to Protect Patent under Ethiopian Law: a legal brief on the Inventions, Minor Inventions and Industrial Designs Proclamation of Ethiopia
Note: This guide provides vital information on Ethiopian trademark law and practice and is not intended to substitute professional advice given with full knowledge of the specific circumstances of each case and proficiency in the law of Ethiopia such as might be provided by a trademark Attorney or trademark Agent in Ethiopia.