Ethiopia introduces trade mark law

The Federal Democratic Republic of Ethiopia has recently introduced trade mark legislation to replace its quirky Cautionary Notice system.

This is positive news for Africa's second most populous country - it's ahead of Egypt and only behind Nigeria in this respect - and one of the world's fastest growing economies.

The country's coffee industry has made significant efforts around its brands - with the support of their IP Office - so it was important their own trade mark law was brought up-to-date.

During the Scramble for Africa in the late 19th Century, Ethiopia was one of only two African nations not to have been controlled by one of the European powers of the time. It retains pride with this fact and perhaps this explains why the new law, which is modern in the main, contains some quirks. A seven-year term of registration stands out. Perhaps they are conscious on losing out on renewal fees bearing in mind the old system established six-year terms, with short-form Cautionary Notices to be published in intervening two-year periods. It has also shown no enthusiasm for joining the Madrid Protocol club.

Certain bureaucratic elements are retained, namely, the need to submit a legalised Power of Attorney and a legalised "home" registration certificate. At least the latter requirement has been relaxed and a legalised Extract of the Commercial Register can be submitted as an alternative.

Well-known marks are recognised, priority can be claimed and registrations will be vulnerable to cancellation on the grounds of non-use if they are not used for a continuous period of three years.

There is an 18-month "sunrise" period in which owners of existing rights filed before 7 July 2006 can re-register their trade marks under the new law. The deadline in which to file these - and claim the filing dates of the existing rights - is informally set at 24 June 2014.

Applications filed after 7 July 2006 will be prosecuted under the new law. If they are already registered then it is possible to request fresh, updated Certificates of Registration and indeed it seems advisable to do this.

As is typical when a country introduces a new trade mark law there remain practical details that are unknown. Waiting to see how things will operate is not a bad idea, but I would recommend that trade mark owners with interests in Ethiopia should look to make their re-registration decisions shortly. This will give them plenty of time to collate all the necessary supporting documentation and file it with their applications. This will help avoid late filing expenses and also, perhaps more importantly, help the Ethiopian Intellectual Property Office remain organised and speed up registration times.

Fighting counterfeits through Customs registration of IP rights

Counterfeiting represents an ever increasing percentage of world trade and is likely to continue being a major problem facing IP rights owners in the coming years. Education of the general public that counterfeiting is not victimless and causes significant damage will still be offset by consumer demand for 'branded' (counterfeit) products.

In some countries it is possible to record trade marks and other IP rights with the Customs Authorities. This can be an effective step to catch counterfeits. It is also inexpensive and the costs involved can contribute towards financing increased IP training of border personnel. 

Registering with Customs can be useful in developed economies such as the European Union and United States, in particular, to help prevent the importation of counterfeit products. If you are only in possession of a national right in an EU member state then your Customs recordal application can be limited to a 'National Intellectual Property Rights Application' as opposed to a 'Community Intellectual Property Rights Application'.

China represents a manufacturing hub for counterfeit products and usefully the Chinese Customs authorities examine not just imports but exports too. A recordal of an IP right at Customs will enable them to detain a potentially infringing shipment coming into the country but also such a shipment leaving China.

It is also possible to register IP rights in other key jurisdictions such as India, Mexico (since January 2012), Taiwan and Turkey and many more. I have been advised that Brazil is looking to introduce similar provisions.

There are a couple of quirks to watch out for if you are looking to register your trade marks/IP rights with Customs authorities globally (where it is possible). Jordan is slightly unaligned with their trade mark regime as customs registration must be made with the central Jordanian authorities but also separately with the Aqaba Special Economic Zone Authority (ASEZA) to cover the whole country. Aqaba is Jordan's only seaport.

When it comes to the United Arab Emirates, the Customs authorities are not managed federally (unlike the Trade Marks Office) but remain under the responsibility of the seven emirates. Of these seven, Dubai, Ras al-Khaimah and Sharjah have implemented a registration of IP rights service. Sharjah is often regarded as an extension of Dubai these days. Ras al-Khaimah (or RAK for short) is more remote but the UAE is not a big country.

So you may now look to register your company's or your client's trade marks and IP rights with the local Customs authorities from the United States to Albania (where there is also a recordal facility). Some countries do not provide for the possibility to record trade marks or other IP rights with their Customs authorities. However, it can be possible to make informal requests to the Customs authorities and these can result in your successful notification when infringing products enter the country.

This is just a snapshot of the possibilities but if you have any more specific requests please do not hesitate to get in touch, or liaise with your usual agents.

Cost optimisation in a challenging trade mark world‏

I've recently read a report on trends in IP management. (Of course, the responses may not be truly representative of the global picture but let's assume they are.)

I'll concentrate my commentary on trade marks as this is my core area of expertise. It is not surprising that 93% of trade mark professionals say controlling costs is important.

Litigation costs are of most concern. The best lawyers are needed in order to fight litigation cases and they don't tend to come cheaply. Nevertheless, for key jurisdictions where there are a number of good law firms, large organisations should not be reluctant to shop around. Trying different approaches can work too. Negotiating a (bigger) blanket discount could be appropriate. Or debate dangling the carrot of juicy litigation but expect a firm to provide standard trade mark registration and prosecution services at beneficial rates. Alternatively, consider retaining some firms as pure litigators and use other (less expensive) firms to handle the less complex matters.

When it comes to trade mark registration, searches and portfolio management, these are more controllable.

When it comes to searches, the number of FREE tools out there to conduct preliminary searches is growing. I've blogged on Europe and the US before. Since then Avantiq now offer 35 databases for a free identical overview. Of course, free tools provide a lot of peace of mind when it comes to costs. I'm not here to endorse them but being aware of free tools should be helpful.

The commercial search providers are increasing the number of databases available on-line all the time. These tend to work on a price-per-hit basis which, to me, does not help transparency when it comes to costs. Consider a subscription for these (although they often have a "fair use" policy) and limit this to key databases that you need to check regularly, if necessary. Strategise which ones will give you the most value. If it costs, say, €1000 a year for one country's database this may seem reasonable, but if it is used merely as a preliminary step and you are still proceeding with nearly as many (non-clearing) full availability searches then you might not be recouping the costs.

Obviously the ease of use of a commercial database is important to ensure best internal efficiencies and do be careful not to be sucked in by a "our platform contains 70+ trade mark databases" if 80% of your portfolio is in, say, 20 countries.

I've worked in organisations that need global trade marks and then those that look for localised or regional brands. For the former, the commercial databases can be great as you can check multiple databases through a single platform. There can be costs incurred due to the number of hits but these could well be outweighed against the lengthy amount of time it would take to check multiple databases independently.

However, if your organisation has a local or regional approach to trade marks then many Trade Marks Offices provide free databases to check. These can be in the local language but if the field for trade mark is not apparent, a quick translation of the page through Google can usually point it out. Be careful in some countries that are members of the EU and/or the Madrid Protocol but where the Community and International Registers need checking separately.

Having multiple resources to check requires set down guidelines containing quick links to the appropriate web pages. This will be time-consuming to prepare - and with databases developing and new tools coming to market it will always be work-in-progress - but most would see it as worthwhile. Having a gatekeeper for this procedure can be good, alternatively having collective responsibility can keep it fresh and updated. Much of this can depend on department culture. But now you're thinking this sounds great but would never happen in our organisation, the procedure would get started and then put on the back burner and forgotten about? That's when you need to give someone like myself a call and have a procedure drafted up and presented to your team in an agreed time scale. If need be, have the external consultant review it each year too. A good consultant will be able to analyse and explore options for your paid-for searches too so you are getting the best value. The best consultants will be impartial to the various options available.

Consultancy is an area that was identified as requiring support by trade mark professionals. I can understand this. The definition of "consultancy" is broad but I'll narrow it down - for the purpose of this blog - to process management which can include when you go to suppliers and who those suppliers could be. It is important to have robust but easy-to-follow procedures. It can be very useful to have an outside pair of eyes look at internal processes. I've walked into an organisation before and with some remarkably small tweaks have enabled it to become more efficient. When you are busy with day-to-day work it can be difficult, to use an English phrase, to see the wood for the trees. Bigger changes can often require more selling. I've suggested wacky changes in the past - they've not been entirely serious but they can get other people thinking. The creativity of the collective can be an amazing tool.

"Old fashioned" methods are not always a relic from the past that we must move away from. Their simplicity can be undervalued. With some original thinking these can often be adapted to modern infrastructures.

Outsourcing was rated less important than consultancy although depending on your definitions there is an overlap. In terms of managing a trade mark portfolio, I would anticipate this is where trade mark professionals outsource the most, particularly with renewals and watching.

To be honest, outsourcing is not always going to save you external costs. If you're a big organisation then many of your agents will be giving you discounted rates so you can argue that the discounted rates an outsourcing company has negotiated may not be much greater than what you already have; then take into account the provider's charges. However, outsourcing the risk and having a reduced internal administrative burden can produce savings that are less easy to see. When you're located somewhere where recruiting staff is difficult it can be additionally advantageous.

Staff can be very much anti-outsourcing. To some they take it personally as though they cannot be trusted with, for example, managing a renewal programme. Some fear for their own jobs. It can be something to genuinely fear, but outsourcing can free up time to allow staff to be more value adding to a business and be seen as less of a cost figure. In any case, often there will be retirements or resignations regardless and any job losses outsourcing contributes to will be natural rather than forced.

From my side, the challenges being faced have made people be more open minded to changes as they view them as more necessary. Openness has to be a good thing.

A "one-size fits all" approach is inappropriate. Professionally I enjoy going into organisations whether I am given a blank canvas or something with more specific aims.