Is Custom Recordal of Intellectual Property Rights (IPRs) available in Ethiopia?
Is Custom Recordal of IPRs compulsory in Ethiopia?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Ethiopia?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Ethiopia?
The trademark registration and proclamation no. 501/2006 together with the trademark registration and protection regulation no. 273/2012 (Section 42) - form the legal basis for Custom Recordal of IPRs (Border Control Measures) in Ethiopia.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective both on the import and export of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
It is the role of the customs to admit the applications concerning the recordal of rights, and thereby, keep a constant check on the major inlets and outlets of the country concerning the presence of infringing goods. In doing so, it is also their responsibility to keep the rights holder informed, and where such alleged goods are found, the customs shall inform both the counterparts to ensure proper and unbiased investigation of the allegedly infringing goods.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
A written application has to be made along with the supporting documents to the Customs authority. The applicant may have to furnish additional documents as may be required for the enforcement of IP rights in favour of the holder of those rights.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The documents to be submitted are as follows:
Power of attorney legalized by the Ethiopian Consulate
Proof of registration
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
There is no period prescribed; however, the information is usually passed on as soon as possible.
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Ethiopia by land, sea, and air?
Yes, the system is centralized.
Is there an online system for Custom Recordal in Ethiopia?
There has to be a physical submission of the application.
What is the official fee for Custom Recordal in Ethiopia?
There is no such formal fee for recordal of rights to be made.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Ethiopia?
In which scenario does the customs department/authority suspend the clearance of imported goods?
If the customs find goods of infringing nature, they may detain the goods until the proper determination as to their nature is made by a competent court.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
The customs may require the submission of a sufficient security, which shall be determined considering the quality and quantity of goods being detained.
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
The customs inform both the parties to the dispute, the importer/exporter and the IP right holders, as to the measures that have been taken to seize the goods. The IP rights holder is also informed about the need to furnish an injunctive order from the court to continue detention of such goods.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
Yes, to address the issue of infringing goods, a civil court proceeding must be initiated by the IP rights holder. Failure to do so shall result in the suspension or release of goods from the detaining facility.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Ethiopia? If yes, then kindly give 2-3 points?
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
The court may require the submission of other supporting documents.
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
The possible remedies awarded by the court include destruction of goods.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?