Trademark

SET BY: EYILACHEW GEDIF MENGISTIE

 Definition and Registration of Trademark
❑The EC Trademark Regulation and Directive
➢ Trademark is any sign capable of being represented graphically,
• particularly words, including personal names, designs, letters, numerals, the shape of goods
or their packaging,
• provided that such signs are capable of distinguishing the goods or services of one
undertaking from those of other undertakings
❑Article 15, the TRIPS Agreement
➢ Trademark is any sign or any combination of signs,
• capable of distinguishing the goods or services of one undertaking from those of another
undertaking
 Continued…
➢ in particular words including
• personal names,
• Letters and numerals
• figurative elements
• combinations of colours, and
• any combination of such signs
❑According to the TRIPS,
• Distinctiveness can be acquired through use even though signs are not capable of
distinguishing the relevant goods or services,
• Visual perceptibility can be made a condition of registration
Continued..
❑In Ethiopia, Art 2(12) states,
➢ “Trademark" means any visible sign
• capable of distinguishing goods or services of one person from those of other
persons
• includes words, designs, letters, numerals, colors or the shape of goods or their
packaging or the combinations thereof
Registration of trademark
❑European Community Registration
➢ Single registration –
▪ is made with a single application to the Office for Harmonization in the Internal
Market (OHIM)
▪ registered, transferred, surrendered, or revoked only for the whole Community
❑Single Enforcement System
• decisions on infringement are enforceable throughout the Community without
further proceedings
Registration in Ethiopia
❑Registration is regulated as per Article 8 and the following provisions of the
proclamation, and Article 9-13 of the directives.
❑The Principle of the Right of Priority (Art. 10)
➢ First filed application
❑In a foreign country (Also see Art 3, the Scope)
• reapplication in Ethiopia
• for the same trademark
• concerning the same goods or services,
• Within six months
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❑Effective Date (Art. 14)
➢ An applicant whose application is pending
• has the same privileges and rights as he would have if the trademark had been
registered;
• Exercisable after an application is published until the registration of the
trademark
❑Except for Infringement proceedings
Rationales for trademark system
A. Indicator of Origin
➢ The accepted and traditional role of a trademark
➢ Functions either
• to identify the actual physical origin of the goods/services or
• to guarantee the identity of the origin of the goods/services
B. Goodwill and Quality of Goods
➢ The more American perspective of the role of the trademark which views a trademark as
• visible mediums by which the goodwill is identified, bought and sold, and known to the
public
• An agency for the actual creation and perpetuation of goodwill
Continued…
C. Social Function or Lifestyle Indicator
➢ Trademarks can convey a variety of messages and information to the consumer,
and to the public
• to identify and differentiate products in the marketplace
• to differentiate purchasers or wearers of the products in the marketplace
• Therefore, they have become ‘fashion statements
Continued…
D. Marketplace and Competition Function
➢ A trademark helps to enable competitors to guard against unfair trading or competition
➢ trademark law is for the interest of
• Consumers
• Producer (right holder) and
• the marketplace
➢ For consumers
➢ As they rely on it
• to protect the distinctive power of the mark
• so that it can convey information in a more efficient manner
• Information about the source, quality, etc
Continued…
➢ For trademark owners
➢ As they rely on trademark law to prevent other competitors from
• misappropriating or tarnishing their business goodwill
• which may lead to the dilution of the mark
❑For the market as a whole
❑As it relies on the law to regulate the use of trademarks so as
• to protect against confusion in the marketplace
• which would severely compromise consumer choice
• Including protecting the rights of other market traders
Rational in Ethiopia
• What is the policy reason behind protecting trademark in Ethiopia?
• The Preamble
➢ To protract reputation and good will of persons engage in business
➢ Avoid confusion between similar goods and services
➢ To guiding customers choices and interests
❑To positively impact on the
• national economic advancement and
• especially on the trade and industrial development of the country
❑Protecting interests of other competitors (see limitation provision)
Principles of Protection
❑This part deals with
➢ Protectable Subject Matter
➢ Criteria of Protection and Excluded Subject Matter
➢ Scope of Protection and Duration
➢ Limitations and Defenses
Criteria of Protection
❑Two requirements for protection of trademark
❖Distinctiveness
❖Graphic representation/Fixation/visibility
Graphic Representation
• is not compulsory under the TRIPS Agreement
• requires some point of fixation without a need for writing down the complex
and secret chemical formula
• ‘The smell of fresh cut grass’ for instance, suffices for fixation of smell sign
Distinctiveness
• Requires that the sign must be capable of distinguishing goods and services;
• that is, the mark must have ‘distinctive character’
• In some jurisdictions, the distinctiveness of a mark depends on what is excluded
❑Two types of exclusion
• Exception imposing absolute legal bars, and
• Exception imposing relative legal bars
➢ While former type bar signs which are not distinctive
➢ The latter bars signs otherwise distinctive for the reason of protecting existing rights
Absolute bar
• marks which are devoid of any distinctive character;
• marks which are descriptive;
• marks which are generic;
• marks which comprise certain types of shapes;
• marks which are refused on general grounds of morality and public policy
1. Marks which are devoid of any distinctive character
• Trademarks must be capable of identifying the product as originating from a particular
undertaking and
• Thus, distinguishing it from other undertakings’
• Any mark failing this requirement is devoid of any distinctive character
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➢ Marks devoid of any distinctive character include:
• the sort of word (or another sign) which requires educating the public that it is a
trademark
• A meaningless word or a word inappropriate for the goods concerned (eg.
‘North Pole’ for bananas)
Rational for exclusion
➢ Marks devoid of any distinctive character are excluded since,
• they are considered to be in the public domain and
• Fair use principle – they form the store of signs available to all traders
2. Descriptive Marks
➢ Are trademarks which consist exclusively of signs or indications which designate
• the kind, quality or quantity
• intended purpose or value,
• geographical origin or
• time of production of the goods or of rendering of the service
➢ Rationale for exclusion
• other traders need to access such words to describe their own goods and services
• unless there is convincing evidence that the market has attached a secondary
meaning to the word
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❑Examples for descriptive marks
• Terms indicating kind, quality or quantity of the goods such as ‘best’, ‘good’, or
‘extra’ or ‘pint’ or ‘kilo’ or ‘Frootloops’ for cereal preparations containing fruits
• terms which inform of the intended purpose of the product such as ‘Get Thin’ for
weight loss products
• terms indicating value such as ‘Bargain’ or ‘Super’
• terms indicating geographical origin of the product or service such as ‘Argentine
Beef’ for butchers
• terms indicating the time of production of goods or rendering of services such as ‘24-
hour online’
3. Generic marks

❑ Denies registration to trademarks which consist exclusively of signs or indications

• which have become customary in the current language or
• in the bona fide and established practices of trade
❑Examples include
• ‘4 Star ****’ for brandy or hotels, or
• the picture of grapes for wine
• such as aspirin, cornflakes, escalator, linoleum, yo-yo
• ‘Highland’ for purified water ?
4. Shape marks

❑ a sign will not be registered as a trademark if it consists exclusively of:

• (a) the shape which results from the nature of the goods themselves;
• (b) the shape of goods which is necessary to obtain a technical result - (for example,
the head of a screwdriver; the shape of a ball; the shape of a wheel);
• (c) the shape which gives substantial value to the goods (for example, an elaborate
bottle for perfume)
❑Rationale:
• to minimize areas of cumulative protection between patent, design and trade mark
laws, and
• to prevent obtaining permanent monopolies in functional engineering designs and
shapes
5. Moral and public policy bars

❑Marks can be refused protection due to general public interest reasons if the
mark is
• contrary to public policy or accepted principles of morality, or
• of such a nature as to deceive the public (nature, quality or geographical origin
of goods), or
• the mark comprises a specially protected emblem, or
• their use is prohibited, or
• if the application for trademark is filed in bad faith
Relative grounds for refusal

❑if the mark is identical to an earlier registered mark, about identical goods
❑is identical or similar to an earlier registered mark, about identical or similar
goods, and if there is confusion including a likelihood of association
❑is identical or similar to a registered famous mark,
✓ in respect of either similar or dissimilar goods, and
✓ if unfair advantage is taken of or is
✓ detrimental to the distinctive character or repute of the famous mark (anti-
dilution)
Criteria of Protection and Excluded Marks in Ethiopia
❑ Distinctiveness (Art. 5(1)
• Any trademark that is capable of clearly distinguishing goods or services of a person from
those of other persons shall be eligible for registration
❑ Graphic representation/Fixation
➢ Cumulative reading of
• Art 5(2), colours options for registration
• Art. 6(1)(b) exclusion of sounds and smells and
• Art. 2(12), trademark is any visible…’/pl
➢ Hints the Ethiopian law required fixation or graphic representation of the mark
Continued…
❑ Registration refusal
• Because the marks are inadmissible or
• Such registration may infringe protected rights of the third party
❑ Absolute and relative bar
➢ Grounds for absolute bar (Art. 5 & 6)
❖ Inadmissible marks are trademarks:
• Which consists of sounds and or smell
• Is incapable of distinguishing the goods or services of one person from those of others
• Contrary to public order or morality
Continued…
❑ Consisting exclusively of signs or indications which designate
• the kind, quality, quantity, intended purpose, value, geographical origin,
• the time of production of the goods or of rendering of the service, or
• other characteristics of the goods or service
❑ Consisting exclusively of signs or indications which
• have become customary in the current language use in relation to such goods and
• services for which the registration of trademark is applied for or
• which have become customary in the economic and business activities
Continued…
• Consisting exclusively of shape resulting from the nature of goods
• A trademark likely to mislead the public or the business community
• Official marks, names, flags, abbreviations and initials
• Marks consisting exclusively of surname of the applicant
• Marks consisting exclusively the full name of an alive person without his consent
❑Exceptions for Well Known Marks
• Known in Ethiopia
• Applicable in case of kinds and qualities…, customary marks and use of surname
Scope and duration of protection

❑The owner of a registered trademark has the exclusive right to prevent all third
parties
• From unauthorized use of his mark
• in the course of trade
• Use of identical or similar signs for goods or services which are identical or
similar to those in respect of which the trademark is registered
• where such use would result in a likelihood of confusion
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❑ There are three important elements:
(1) Unauthorized use in the course of trade
(2) of an identical/similar mark on identical/similar goods, and
(3) a likelihood of confusion
❑ likelihood of confusion is presumed - the use of an identical sign for identical goods or services.
1. Unauthorised Use in the Course of Trade
What does ‘use’ actually signify?
❑ the European legislation offers a non-exhaustive list of activities that can constitute unauthorized
use:
▪ affixing it to goods or their packaging
Continued…
• offering the goods, or putting them on the market
• offering or supplying services under the sign
• importing or exporting the goods under that sign
2. Identical/Similar mark on Identical/Similar Goods
❑Double identity
❑Factors useful in gauging whether products were identical:
▪ the respective uses and users of the respective goods or services
Continued…
• the physical nature of the goods or acts of services
• the respective trade channels through which the goods or services reach the market
and
• the extent to which the respective goods or services are competitive
❑Confusing similarities
• Sabel v. Puma,
• Puma were registered proprietors of two pictorial trademarks depicting large cats in
various bounding and leaping positions.
• The mark was registered for leather goods and articles of clothing.
Continued..
• Sabel applied to register their mark which depicted a bounding cheetah, with the word ‘Sabel’
• for leather and imitation leather products, and clothing
• Test: the complementary notion of ‘likelihood of confusion’ and ‘likelihood of association’
❑ According to this test, to find trademark infringement,
• some degree of confusion on the part of the public is essential
• likelihood should be appreciated globally,
• taking into account all relevant factors such as visual, aural and conceptual similarity of marks
Continued…
❑Supplementing test:
➢ Perception of an Ordinary Consumer,
• the ordinary consumer normally perceives the mark as a whole, and
• does not necessarily analyze each element of the mark
❑Distinctive nature of the sign
• Strength or reputation of the previously registered mark
• the more distinctive and stronger a mark was, the greater the likelihood of
confusion.
Continued..
3. Well-known marks
➢ Article 6 bis, Paris Convention sets out the following:
• The countries of the Union undertake . . . to refuse or to cancel the registration, and
to prohibit the use, of a trademark
• which constitutes a reproduction, an imitation, or a translation,
• liable to create confusion
• of a mark considered by the competent authority of the country of registration or
• used to be well known in that country as being already the mark of a person entitled
to the benefits of this Convention and
• used for identical or similar goods
Duration
❑Ethiopia Without prejudice to the provisions of Articles 35 to 37 of the Proclamation,
• the registration of a trademark shall remain valid for a period of seven years
• from the date of submission of the application for registration
• Art. 38 Extension of time is also relevant here
❑Renewal
• Renewable indefinitely
• Change of mark and adding new goods to the list it represents is prohibited
• Change of list by eliminating certain represented goods or services is possible
• Failure to renew renders it public domain (Art. 25(7)).
Limitations and Defenses
• The Trips Art. 17
➢ Members may provide
• limited exceptions to the rights conferred by a trademark
• such exceptions as fair use of descriptive terms
• provided that such exceptions take account of the legitimate interests of the owner of
the trademark and third parties
❑The European Community Trademark Regulation Art. 12
• A right holder may prohibit a third party from using in the course of trade:
• (a) One’s own name or address
Continued..
(b) indications concerning
• the kind, quality, quantity,
• intended purpose, value,
• geographical origin,
• the time of production of the goods or rendering of the service, or
• other characteristics of the goods or service;
• (c) the trademark where it is necessary to indicate the intended purpose of a product or
service
• In particular as accessories or spare parts,
• Provided he uses them by honest practices in an industrial or commercial matter
Limitation in Ethiopia
• Art. 27 of the Proclamation
(1) the owner has no right to preclude third parties from using the trademark
• about the goods lawfully sold in any country under that trademark
• provided that these goods have not undergone any change
(2) bona fide users of
• their own name or address, pseudonym, geographical name or
• Exact indications of certain descriptions of his products
• so far such use is confined to the purpose of mere identification or information and
• cannot mislead the public as to the source of goods or services
Devolving into the Public Domain
➢ Failure to renew (Art. 25(7))
• Renewed within three months of expiration or six months with penalty
• Not renewed within this period is considered to have been waived and canceled
• removal from the register, ultimately becoming the public domain available to
everyone.
➢ Renunciation
• The owner of a registered trademark may renounce it
• With the consent of the licensee, if any
• Either the whole registration or part only of it (with respect of part of the goods and
services for which the trademark is registered
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➢ Renunciation how made?
• By submitting an application to the Office for cancellation
• Publication of application on IP Gazette
• By entering the decision of cancellation into the register (making it effective from this time)
➢ Invalidation (Art. 27))
• Grounds
• For the failure to fulfill required conditions at the time of registration
• May apply to the whole or part only of it
• Initiated by written request of any interested person or by the Office
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❑Effects of invalidation
• Invalidation – from the very time of registration
• Effects of a trademark are also invalidated
• May remain valid between the proprietor and the licensee
• (licensee may not claim the repayment benefitted by the proprietor)
Continued…
❑Cancellation of trademark for nonuse (Art. 35)
➢ Nonuse
• Absence of any use in Ethiopia,
• By the proprietor or the licensee
• In respect of any of the goods or services
• without legitimate reason,
• For the period of at least three years
Continued…
❑ Cancellation is pertinent to the nature of nonuse – either partial or total
➢ Exceptions
• Existence of force majeure
• The use in a form differing in elements without altering its distinctive character
in which it was registered
Enforcement of Rights in Ethiopia
1. Provisional measures (Art. 39)
❑Aims at
• Prevention of an infringement of a right
• Preserving relevant evidence
➢ Includes
• Hearing without summoning
• Injunction
• Search and seizure
Continued..
2. Civil Remedies (Art. 40)
❑ Made for:
• Injunction
• Compensation for damages
• Or both
❑ Civil Remedy
• The amount of compensation equals to whichever is highest
• the net profit derived by the defendant from the use
• The amount of royalty the defendant could have been charged had it been granted by license and
• The expenses incurred in the course of the proceeding
Continued…
3. Criminal Sanctions (Art. 41)
• Rigorous imprisonment
• of not less than 5 years and not more than 10 years for intentional commission or
• of not less than 1 year and not more than 5 years for commission by gross negligence
➢ Criminal
• Seizure, forfeiture and destruction
• of the infringing goods and
• of any maternal and
• Implements used in the commission of the offense
Continued…
4. Seizure and detaining of goods at customs ports and stations (Art. 42)
• based on written application accompanied by a certificate of trademark
registration and other relevant evidence
• made by the right holder, and
• upon sufficient guarantee provided by the applicant,
• seize and detain goods that are subject to the alleged infringement of the
applicant's right.