Ethio Ceramic PLC –v.- Ethiopian Intellectual Property Office & Ovorgiga Technology Ltd.
Federal Supreme Court Cassation File No. 57179 (March 1, 2011)
Holding of the Court:
While giving a decision on a request for trademark registration certificate, the Ethiopian Intellectual Property Office should take the necessary measures so as to avoid confusion on the part of the public, thereby causing unfair trade competition.
Articles 10 (1), 2(a) & (b) of Trade Practice Proclamation No. 329/2003; Trademark Registration and Protection Proclamation No. 501/2006; Article 6(1) of Ethiopian Intellectual Property Office Establishment
Proclamation No. 320/2003
Cassation File No. 57179 Yekatit 22, 2003 E.C (March 1, 2011)
Federal Supreme Court Cassation Division
Justices: Tegene Getaneh, Teshager G/Selassie, Almaw Wolie, Ali Mohammed, Adane Negussie
Petitioner: Ethio Ceramic PLC
Respondents: 1. Ethiopian Intellectual Property Office
2. OvorgigaTechnology Limited The court has rendered the following judgment.
This case is brought to the Cassation Division of the Federal Supreme Court challenging the decisions of the Federal High Court.
The second respondent submitted an application in which it requested the first respondent to register the phrase “Ethio Cement” written within a frame surrounded by ten stars as a trademark for its international standard cement product. The first respondent, before registering the trademark announced it in Addis Zemen Newspaper dated Megabit 15, 2000 E.C (March 24, 2008)
which requested any interested party to submit its objection. The current petitioner then submitted an objection arguing that, it is on the process of having its investment permit issued for the purpose of establishing a cement factory using the phrase “Ethio Cement” as a trade name, and that the trademark proposed for registration by the second respondent will confuse customers, considering the fact that both companies will produce the same product, i.e. cement.
Subsequently, the first respondent rejected the objection of the petitioner as having no legal basis, and registered the trademark requested by the second respondent stating that:
- Even though the petitioner submitted evidence to prove that it is using the phrase “Ethio Cement” as its trade name, it did not get it registered as trademark;
- As the second respondent brought the phrase “Ethio Cement” with the stars surrounding it, it has the right to get the phrase “Ethio Cement” registered together with another symbol that is eligible for registration.
The Federal High Court which entertained the appeal of the petitioner from the decision of the first respondent (i.e. Ethiopian Intellectual Property Office), rendered a decision confirming that the phrase “Ethio Cement” written inside a square and surrounded by ten stars is the property and trademark of the second respondent, and therefore it shall not be cancelled as it does not affect the rights and benefits of the petitioner.
The petitioner submitted its petition to the Cassation Division of the Federal Supreme Court on Sene 10, 2002 E.C (June 17, 2010) and contended that the phrase “Ethio Cement” which is registered as the trademark of the second respondent, is also registered by the relevant bodies as the trade name of the product it produces. The petitioner further underlined that the first respondent, in registering the trademark of the second respondent, is granting it the right to use a trade name which is in the course of being used by the petitioner for its cement product. This, according to the petitioner, in addition to confusing customers, also violates the relevant laws and contravenes the fundamental goals and objectives stated in the Trade Practice Proclamation No. 329/2003 as well as Article 5 and other provisions of the Trademark Registration and Protection Proclamation No. 501/2006. The petitioner requested for the reversal of the decision stating that it has fundamental error of law.
The first respondent in a statement of defence it submitted on Tahsas 13, 2003 (December 22, 2010) explained the justification for its decision and the difference between a trademark and a trade name. It stated that a trade name is a name under which a person operates his business and its purpose it to
clearly distinguish the business from other businesses, and it is registered by the Ministry of Trade or regional Trade Bureaus. A trademark, the first respondent added, is protected and registered by virtue of Proclamation No. 501/2006, and this responsibility is given to the first respondent by Proclamation No. 320/2003. The first respondent argued that, even though it is clearly stipulated in Articles 5(1) and 7(2) of Proclamation No. 501/2006 that business organizations, by getting their trade names registered as trademarks, can be owners, this has not been done. The first respondent further contended that it gave protection to the stars and not to the phrase “Ethio Cement” and requested the petition to be rejected as it does not have any legal basis.
In its statement of defence submitted on Tir 30, 2003 (February 7, 2011), the second respondent argued that trade name and trademark are different. As the petitioner did not start producing and selling cement, the trademark that it will put on the cement it will produce is not yet known. Thus, it requested the court to cancel the petition arguing that the petitioner did not start distributing products, and that it did not use the trade name of the petitioner as a trademark.
The Cassation Division then examined the case, holding as an issue whether the decisions of the first respondent and the Federal High Court are appropriate. To decide on this issue, the Cassation Division examined the relevant laws, in particular: Commercial Registration and Business Licensing Proclamation No. 67/1997, Trade Practice Proclamation No. 329/2003, Ethiopian Intellectual Property Office Establishment Proclamation No. 320/2003 and Trademark Registration and Protection Proclamation No. 501/2006.
The court has noted from the evidence submitted by the petitioner to the first respondent that, the petitioner is a business organization registered under the trade name of “Ethio Cement PLC” and that is a cement factory established to avail its products for local market as per the stipulations of Article 16 (1) of Proclamation No. 329/2003 which has amended Proclamation No. 67/1997 and Article 135 (1&2) of the Commercial Code. It can also export its product to international markets as per Article 32 of the Commercial Registration and Business Licensing (Amendment) Proclamation No. 328/2003. While the petitioner is protected by the Commercial Code and the Trade Practice Proclamation No. 329/2003 when undertaking these activities, it is also required to discharge its obligations stated under this proclamation as well as other laws.
When the petitioner avails its product to the market, Article 21(3) of Proclamation 329/2003 requires it to fix explanatory labels; the net weight, the name and address of the factory or packer as well as the production and expiry date. Thus, it can be observed from this provision that the petitioner, after
finishing the construction of its company and when it starts production and distribution of its products, should fix on them the information that the “Ethio Cement PLC” is the producer. Even though it has not yet distributed cement products using its trade name, it has the obligation to fix its trade name and address on the cement product it makes available to the market.
The Cassation Division also noted from the application submitted by the second respondent to the first respondent that the work it will be engaged in relates to the production and distribution of cement, and that it requested the latter to register the phrase “Ethio Cement” written inside a square and surrounded by ten stars as its trade mark and to be the only owner and user thereto. The court also noted in this regard that, even though the trademark of the second respondent is written in a square and surrounded by ten stars, it will be similar with the English version of the trade name of the petitioner’s product on which it has the obligation to fix “Ethio Cement Private Ltd.”, as per Article 21(3(b)) of Proclamation No. 329/2003. This means, the trade mark which is registered by the first respondent enabling the second respondent to post it on the cement product (which it produces and distributes) will be similar to the trade name “Ethio Cement” which the petitioner is required by law to fix on the cement it produces.
As stipulated under Article 3(1) of Proclamation No. 329/2003, the objective of the Trade Practices Proclamation is to secure fair competition processes through the prevention and elimination of anti-competition and unfair trade practices. According to Article 10(1) of the same Proclamation, what is considered as unfair competition is any act or commercial practice that aims at eliminating competitors through different methods. Arts. 10(2)(a)&(c) of this proclamation also respectively define unfair trade competition as “[a]ny act that causes, or is likely to cause, confusion with respect to another enterprise or its activities, in particular, the products or services offered by such enterprise”, and as “[a]ny act that misleads or is likely to mislead the public with respect to an enterprise or its activities, in particular the products or serves offered by such enterprise”.
Likewise, it is indicated in the first paragraph of the preamble of the Trademark Registration and Protection Proclamation No. 501/2006 that, the objective of the proclamation is to protect the reputation and goodwill of business persons engaged in manufacturing and distribution of goods as well as rendering services by protecting trademarks to avoid confusion between similar goods and services. Moreover, it is also clearly indicated in Article 6(1) of Proclamation No. 320/2003 that, the first respondent, before giving decision on patent and trademark registration certificate applications, has the obligation to examine content or let the content be examined, and also look into the fundamental objective and detailed provisions of the Trademark
Registration and Protection Proclamation as well as other relevant laws. Thus, the Cassation Division noted that, the first respondent, when requested by the second respondent to register the phrase “Ethio Cement” as a trademark, should have been mindful that, the petitioner which is called with the trade name “Ethio Cement” has, as per Article 21(3) (b) of Proclamation No. 329/2003, the obligation to put this phrase on the cement product that it produces; this would have the effect of making available to the public, a cement product by the second respondent with a phrase “Ethio Cement” written in a square and surrounded by ten stars as its trademark, and on the other hand a cement product on which the trade name of the petitioner Ethio Cement PLC” is written.
When these products are made available to the consumers, they will cause confusion in violation of the objective of the Trademark Registration and Protection Proclamation thereby resulting in unfair competition prohibited under Article 10(2)(b)&(c) of Proclamation No. 329/2003. The Cassation Division has found that the decision of the first respondent was given without carefully examining Article 6(1) of Proclamation No. 320/2003, and will not provide the legal protection that the legislator envisaged to give to the trader and the consumer.
This Cassation Division has thus found a fundamental error of law in the decision of the Federal High Court, by confirming the decision which was given by the Ethiopian Intellectual Property Office (first respondent), without having due regard to the content, fundamental objective and goal of the laws stated above and other relevant laws. The first respondent gave the decision without examining and taking into account the pertinent legal regime and provisions as per Article 6(1) of Proclamation 320/2001. The following decree is thus rendered.
- The decisions of the first respondent and the Federal High Court which allowed the registration of the trademark requested by the second respondent are reversed.
- The second respondent cannot be allowed to use the trademark which is legally protected, unless the phrase “Ethio Cement” is removed and substituted by another name.
Signature of five justices
Source: Federal Supreme Court Cassation Division Decisions
Volume 12, pp. 544 – 548.
Abridged translation: Maereg G. Gidey