Trademark Licensing in Ethiopia: A Guide

Trademarks play a vital role in the protection of brands and the unique identification of goods and services in the marketplace. Trademark licensing is a process by which the owner of a registered trademark or an application for trademark registration allows another person to use the trademark in accordance with the terms and conditions of a license agreement.

This article provides a comprehensive guide on trademark licensing in Ethiopia, including license contracts, nullity of license contracts, invalid clauses of license contracts, the right to grant further licenses, and the rights of licensees.

License Contracts

The owner of a registered trademark or an application for trademark registration may grant a license to another person to use the trademark. The license agreement must be in writing and must indicate whether it is for all or part of the goods or services in respect of which the trademark is registered or an application is filed. The license agreement must be submitted to the Intellectual Property Office of Ethiopia for registration and publication in the intellectual property gazette or a newspaper with nationwide circulation. The license agreement will have no effect against third parties until it is registered.

Nullity of License Contracts

In Ethiopia, a license agreement on a registered trademark or an application for trademark registration will be null and void if it does not contain a provision for effective control by the licensor over the quality of the goods or services in connection with which the trademark may be used.

Invalid Clauses of License Contracts

Any clauses in a license agreement that impose restrictions not derived from the rights conferred by trademark registration or restrictions not necessary for the safeguarding of these rights are considered null and void. However, limitations regarding the scope, territory, or duration of use of the trademark, justified control by the trademark owner, and the obligation to abstain from acts that can prejudice the validity of the trademark registration are not considered restrictions.

Right to Grant Further Licenses

In the absence of any provisions to the contrary in the license agreement, the grant of a license will not prevent the trademark owner from using the trademark. When an exclusive license has been granted, the trademark owner may not grant further licenses to third parties and may not use the trademark himself, unless there are provisions to the contrary in the license agreement.

Right of Licensee

In the absence of any provisions to the contrary in a license agreement, the licensee has the right to use the trademark during the duration of the registration, including renewals, for all the goods or services for which the trademark is registered.

In conclusion, trademark licensing is an important aspect of trademark protection and the commercialization of brands in Ethiopia. Understanding the legal framework and provisions of trademark licensing is essential for both trademark owners and licensees to ensure the protection of their rights and interests.