Mizan Kiros Gebremikael LL.M Thesis: FOREIGN WELL-KNOWN TRADEMARKS PROTECTION IN ETHIOPIA: FROM CONSUMERS' PROTECTION PERSPECTIVE 2020

Mekelle University
School of Law
FOREIGN WELL-KNOWN TRADEMARKS PROTECTION IN ETHIOPIA: FROM

CONSUMERS’ PROTECTION PERSPECTIVE
A Thesis Submitted to the School of Law of Mekelle University in Partial

Fulfillment of the Requirements for the LLM Degree in International
Economic Law
By
MIZAN KIROS GEBREMIKAEL
July 2020
Mekelle University
School of Law

CONSUMERS‟ PROTECTION PERSPECTIVE
A Thesis Submitted by
Mizan Kiros Gebremikael
To the School of Law
July 2020
In partial fulfillment of the requirements for the LL.M. Degree in International Economic Law
has been approved by the thesis supervisor
Yared Berhe Gebrelibanos (LL.B, LL.M, Assist. Professor of Law)
1. Signature___________ Date ___________

(Thesis Advisor/ Supervisor)
2. Signature___________ Date ___________

(Internal Examiner)
3. _______ Signature___________ Date ___________

(External Examiner)
ii
DECLARATION
I, Mizan Kiros Gebremikael, declare that this thesis is my original work and has not been
presented for a degree in any other university or institution and that all sources of materials
used in the thesis have been duly acknowledged.
Mizan Kiros Gebremikael
Signature_____________
Date ________________
iii
To my Mother Etsay Hagos Kidanu
iv
ACKNOWLEDGMENT
Above all, I would like thank to the Almighty God. Next, I want to express my deepest
gratitude to my advisor, Mr. Yared Berhe for his considerate guidance, kind supervision,
invaluable advice, persistent support, and encouragement throughout my study.
I would also like to thank and respect to all the individuals and officials for their help in
facilitating conditions for collecting data from their institution. My thanks also go to all the
key informants for their kind approach and valuable information or suggestions that I needed
from them. I express heartfelt gratitude to my life partner, Rahel Equar for her support and
encouragement in every aspect. Finally, I would like to thank Mebrahtu T., Tesfahun K.,
Angesom A., and all my friends for your kind supports.
v
ACRONYMS
Art. – Article
CCI- Council of the Constitutional Inquiry
CJEU- Court of Justice of the European Union
EIPO – Ethiopian Intellectual Property Office
EC- European Community
EU- European Union
FDI- Foreign Direct Investment
GTA- German Trademark Act
HoF- House of Federation
IP – Intellectual Property
IPRs- Intellectual Property Rights
NAFTA- North American Free Trade Agreement
MoT- Ministry of Trade
TCCP/P- Trade Competition and Consumer Protection/Proclamation
TMD- Trademark Directive of the European Union
TRIPS- Trade-Related Intellectual Property Rights Agreement
TRT- Trademark Registration Treaty
UNCTAD- United Nations Conference on Trade and Development
WIPO – World Intellectual Property Organization
WTO – The World Trade Organization
vi
FOREIGN WELL-KNOWN TRADEMARKS PROTECTION IN ETHIOPIA: FROM THE
CONSUMERS‟ PROTECTION PERSPECTIVE
ABSTRACT
Currently, goods and services produced in one country may cross almost all countries of the
world. From those, some products, which have good quality, become well-known. Some
producers use the well-known trademarks of others, to get market access by confusing
consumers, and benefiting by the name and goodwill of the well-known marks. Though
different „additional rationales‟ developed through time, the protection of trademarks,
including well-known trademarks protection, historically bases its rationale in protecting
consumers from misleading in the free trade market and guarantees them the consistent
quality of the products. This rationale has been taken by the Trademark Proclamation of
Ethiopia, which is observable in its preamble. However, confusions of consumers in the
market because of the fake marks (especially by the fake foreign well-known trademarks) are
practiced here and there in every part of the country. This research has, thus, looked in to and
examined the different laws of the country as well as institutions that have involvement in
protecting the interest of consumers from confusion by fake-foreign well-known trademarks.
This study briefly examines the practical existence of confusion and the subsequently
available remedies in the shoe and cloth market, which was taken as an instance to see the
effect of the legal and institutional frameworks. In doing so, both doctrinal and non-doctrinal
research methodology and, qualitative research approaches were used. Observation was
made in the market and a semi-structured interview was conducted with traders, IPRs experts,
and TCCP experts selected through a purposive sampling method and with buyers selected
through the convenience sampling method. The findings of the study show that the legal and
institutional frameworks are not sufficient to protect the consumers from
confusion/misleading by fake-foreign well-known trademarks. They are not also effectively
protecting the consumers from confusion and deception in the market, which thereby
encourages the producers with fake marks and thereby discourages the consistency of quality
of the well-known products in the market. Based on such facts, the study implicates that
Ethiopia shall give protection to the foreign well-known trademarks irrespective of being a
party to international conventions which protects the trademarks in a way to protect the
interest of consumers. The institutions are also needed to be re-arranged in a way to clasp
different interested groups, including consumers. Besides, there is a need to have laws that
clearly regulate the protection of consumers from confusion by fake foreign well-known
trademarks.
Key words: Confusion, Consumer Protection, Foreign Well-known Trademark, Trademark
Proclamation, Trademark Protection
vii
TABLE OF CONTENTS
CHAPTER ONE ..............................................................................................................................1
INTRODUCTION ...........................................................................................................................1
1.1 Background of the Study ...........................................................................................................1
1.2 Statement of Problems ...............................................................................................................4
1.3 Research Questions ....................................................................................................................5
1.4 Objective of the Study ...............................................................................................................6
1.4.1 General Objective ................................................................................................................6
1.4.2 Specific Objectives ..............................................................................................................6
1.5 Delimitation of the Study ...........................................................................................................6
1.6 Significance of the Study ...........................................................................................................7
1.7 Methodology of the Study .........................................................................................................7
1.7.1 Research Methods ...............................................................................................................7
1.7.2 Types of Data and Data Collection Techniques ..................................................................7
1.7.2.1 Primary Sources of data ................................................................................................8
1.7.2.2 Secondary Sources of Data ...........................................................................................8
1.7.2.3 Selection and Sampling Technique ..............................................................................8
1.7.3 Methods of Data Analysis ...................................................................................................9
1.8 Ethical Considerations ...............................................................................................................9
1.9 Rule of Citation ..........................................................................................................................9
1.10 Limitation of the Study ............................................................................................................9
1.11 General Working Definitions .................................................................................................10
1.12 Organization of the Study ......................................................................................................10
CHAPTER TWO ...........................................................................................................................11
TRADEMARK LAWS AND CONSUMER PROTECTION IN GENERAL ..............................11
viii
2.1 Trademarks and Its Relation to Consumer Protection: Conceptual Overview ........................11
2.2 The Essential Functions of Trademarks Protection and Its Relation with Consumer Protection13
2.2.1 The Legal Function ...........................................................................................................14
2.2.2 Economic Function ...........................................................................................................19
2.2.2.1 Reducing the Search Cost ...........................................................................................20
2.2.2.2 The Quality Assurance Function ................................................................................21
2.3 Development of the Modern Functions of Trademarks ...........................................................22
2.3.1 Communication Function ..................................................................................................22
2.3.2 Advertisement Function ....................................................................................................23
2.3.3 Investment Function ..........................................................................................................23
2.4 Establishment of the Trademark Ownership............................................................................23
2.5 Requirements for Protection/ Registerable signs .....................................................................24
2.5.1 Signs ..................................................................................................................................24
2.5.2 Distinctive Signs ...............................................................................................................25
2.6 Scope of Protection ..................................................................................................................26
2.7 Protection of Well-known Trademarks and Its Relation to Consumer Protection ..................28
2.7.1 Overview of Well-known Trademarks ..............................................................................28
2.7.2 Rationale for Protection of Well-known Trademark.........................................................30
2.7.3 International Framework of Well-known Trademarks Protection ....................................31
2.7.3.1 The Paris Convention .................................................................................................31
2.7.3.2 TRIPs Agreement .......................................................................................................32
2.7.3.3 WIPO Joint Recommendations on Protection of Well-known Marks .......................33
2.7.4 Determination of Well-known Trademarks ......................................................................34
2.7.4.1 Criteria for Determination of Well-known Trademark ..............................................34
2.7.4.2 Ways to Get Well-known Trademark Recognition ....................................................35
ix
2.8 Protection of Well-known Trademarks under the Competition and Consumer Protection Laws
........................................................................................................................................................36
2.9 Effective Enforcement Strategies in Consumers Protection ....................................................37
2.10 Protection of Trademarks in Ethiopia ....................................................................................39
2.10.1 under Proc. No. 501/2006 ...............................................................................................39
2.10.2 Eligibility and Ineligibility of Trademarks for Registration ...........................................41
2.10.3 The Rationales/ Functions of the Trademark Protection .................................................44
2.10.4 Scope of the Trademark Protection .................................................................................46
CHAPTER THREE .......................................................................................................................47
WELL-KNOW TRADEMARKS PROTECTION IN ETHIOPIA................................................47
3.1 Well-known Trademark Protection..........................................................................................47
3.2 Rationale for Well-known Trademark Protection....................................................................49
3.3 Scope of Well-known Trademark Protection: Registered and Unregistered Trademarks .......50
3.4 Protection of National and Foreign Well-known Trademarks .................................................52
3.5 Determination of Well-known Marks ......................................................................................54
3.6 The Exclusive Rights of the Well-known Trademark Owner .................................................57
CHAPTER FOUR ..........................................................................................................................59

CONSUMERS‟ PROTECTION PERSPECTIVE .........................................................................59
4.1 Introduction ..............................................................................................................................59
4.2 The Legal Framework of Consumers‟ Protection from Confusion by Fake-Foreign Well-known
Trademarks in Ethiopia ..................................................................................................................60
4.2.1. Under the Trademark Proclamation .................................................................................60
4.2.2. Under the Trade Competition and Consumers Protection Proclamation .........................69
4.3 The Institutional Framework of Consumers‟ Protection from Confusion by Fake Trademarks in
Ethiopia ..........................................................................................................................................73
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4.3.1 The Ethiopian Intellectual Property Office (EIPO) ..........................................................74
4.3.2 The TCCP Institutions .......................................................................................................79
CHAPTER FIVE ...........................................................................................................................85
CONCLUSION AND RECOMMENDATION .............................................................................85
5.1 Conclusion ...............................................................................................................................85
5.2 Recommendation .....................................................................................................................89
BIBLIOGRAPHY ..........................................................................................................................91
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CHAPTER ONE
INTRODUCTION
1.1 Background of the Study
Despite the use of the term in different national and international related
documents/instruments, there is no authoritative definition for the term IP. 1 However, IP
refers to any knowledge or information that has been the product of human creativity, which
includes, but not limited to, creative works or distinguishing signs or marks.2 It creates
personal property rights in the relevant subject matter i.e. patents, copyright, trademarks,
industrial designs, geographical indication, trade secret etc.3 Generally, IPRs include
copyrights and related rights, trademarks, geographical indications, industrial designs, patents,
layout-designs (topographies) of integrated circuits, protection of undisclosed information,
and control of anti-competitive practices in the contractual licenses.4
The widely accepted justification, though not only, for the protection of IPRs is to encourage
innovations and creations through the protection of the creations and innovations, thereby
benefiting the society of the creations and innovations.5 Thus, one aim of the IPRs is to make
the society beneficiary of creations and innovations by encouraging creations and innovations.
Trademarks, part of IPRs, are marks or signs which enable consumers to distinguish the
sources of the product. Ethiopian trademark proclamation defines it as “any visible sign
capable of distinguishing goods or services of one person from those of others…” 6 it also
provides, in its preamble, the rationale of the proclamation:
1
Fikremarkos Merso, The Ethiopian Law of Intellectual Property Rights: Copyrights, Trademarks, Patents,
Utility Models And Industrial Design(2012), P.11
2
Ibid, P.13
3
Peter Drahos, A Philosophy of Intellectual Property(2 st edi.2016), P.13
4
The Agreement Establishing the World Trade Organization, Annex 1C, Agreement on Trade-Related Aspects of
Intellectual Property Rights, April 15, 1994. (hereinafter the TRIPS Agreement)
5
Fikremarkos Merso, ”Supra note 1” P.22
6
Trademark Registration and Protection Proclamation no. 501/2006, Art.2(12),Neg. Gaz. Year 12 No. 37
(hereinafter Trademark Proclamation)
1
“It is necessary 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” the proclamation also
added in its preamble that “trademarks, in the course of free trade, play an important role in
guiding customers‟ choice and protecting their interest.”7
Thus, one of the main aims of trademark protection is to ensure fair competition and minimizing
consumers' confusion.8 A consumers‟ confusion is minimized by trademarks for it enables them
to distinguish the product at hand is emanated from the same producer of the product with a
specific trademark.9
The trade competition and consumer protection proclamation, under the title of fair competition,
provided also that any act which creates or likely to create confusion with other business
persons is prohibited.10 As we can see from the preamble of the proclamation, one of its aims is
protecting the consumers from confusion, in addition to the aim of ensuring fair trade between
the traders.11
Intellectual property in general and trademarks in particular has territorial application.12 Their
protection is dependent on the registration of each mark on each country. Currently, it is not
possible to get global protection by a single application.13 Ethiopian trademark also provides
that, trademarks get protection only when they get registered in EIPO.14
An exception to this principle, well-known marks, marks which are known by the relevant
sector of the public15, get protection without registration.16 According to Merriam Webster
7
Trademark Proclamation, Preamble (Para. 1&2)
8
Fikremarkos Merso “supra note1” P.166
9
Tilahun Esmael, Protection of Well-known Marks in Ethiopia: A Comparative Treaties Under The Trademark
Proclamation, Haramaya Law review, vol. 1:2,(2012),p.92 “citing” Frank I. Schechter, The Rational Basis of
Trademark protection(1927) p.813-814
10
Trade Competition and Consumer Protection no. 813/2013, , Art.8 (1) &(2)(a),Neg. Gaz. Year 20 th No. 28
(hereinafter the TCCPP)
11
Ibid, Preamble (Para. 2)
12
Carlos A. Braga and Carsten Fink, The economic justification for the grant of intellectual property: Patterns of
convergence and conflict- the implications of the new regime for global competition policy, Chicago-kent law
review, vol. 72(1996), P.441: Available at https://scholarship.kentlaw.iit.edu/cklawreview/vol72/8; last
visited on: Thursday, November 29,2018
13
Tilahun Esmael, Supra note 9, P. 106
14
Trademark Proclamation, Art.4
15
To be discussed in detail under chapter Two
2
learner‟s dictionary, the ordinary meaning of “well-known” is “known by many people”.17
Taking this as a basis for definition, therefore, in the context of trademark law, a well-known
mark can be characterized as a mark that is known to a substantial group of the relevant public
associated with the particular goods or services.18
Well-known trademarks have high probability of infringement, and thereby, have high
potential of creating confusion, than the less-known trademarks not only in the countries
where the products are available and well-known, but also in the countries where the mark is
well-known by the relevant sector of the public though not available. Thus, Protection is given
for well-known marks without the requirement of registration not only for those marks which
are produced or available in the country but also, for those marks which are not available in
the country but known through advertisements.19 The protection of a product marks in a given
territory even in its absence has the aim of protecting the consumers from confusion, in
addition to protecting the international goodwill of the producer.
Ethiopian trademark also includes the same concept of protecting foreign well-known
trademarks.20 This has the aim of protecting the public from confusion and to restrict other
producers not to exploit the goodwill of the trademark holder.
This research focuses on the regulatory framework of foreign well-known trademarks

protection in Ethiopia from the vantage point of protecting the interest of consumers, which is
one of the main aim of trademarks in general and well-known marks in particular. It
particularly assessed the state of efficacy of the institutional framework of consumers‟
protection from confusion by fake marks of foreign well-known trademarks.
16
See the Paris Convention for The Protection of Industrial Property November, 6, 1925 (hereinafter the Paris
Convention) Art. 6bis
See also TRIPS Agreement, Art. 16(2)(3).
17
Merriam Webster learner‟s dictionary, available at: https://learnersdictionary.com/definition/well-known last
visited on January 30, 2020
18
Hà Th Nguyt Thu, Well-Known Trademark Protection Reference to the Japanese experience,(Sept. 2010), P. 8
19
See TRIPS Agreement, Art. 16(2)
20
Trademark proclamation, Art 23
3
1.2 Statement of Problems
Same to the TRIPs Agreement, the Ethiopian trademark law provides that well-known marks
get protection without registration with the precondition or requirement of that, the well-
known trademark are entitled to get protection under an international convention to which
Ethiopia is a party, in addition to the factual requirement that the mark is well-known in
Ethiopia by the relevant sector of the public.21 The most important international agreements in
this regard are the Paris Convention and the TRIPs Agreement. But, the fact shows that
Ethiopia is not a party to the stated prominent international agreements.22 Thus, foreign
marks, though they are well-known by the relevant sector of the public, they can‟t get
protection until Ethiopia joins these international agreements. As a result, consumers may be
left without protection. In other words, products may be produced in the name of well-known
marks and may access the Ethiopian market. Hence, the public may be confused by the similar
or identical marks. This confusion, in fact, is also happening in the market in different
products such as cosmetics, shoes, cloth, mobile, etc. Because of this reason, the familiar
question of consumers in the market becomes “is the product with the original or fake mark?”
Identical marks are available in the Ethiopian market which may lead the public into
confusion. For instance, the researcher has experienced and observed consumers facing the
confusion of buying the real Adidas and the fake mark of Adidas in clothes and shoe market.
The same is happening in the Nike shoe and cloth market.
These indicate the existing legal gap and the existence of consumers‟ confusion. Besides, the
existing institutional frameworks are also in question in addressing the practical problems of
consumer confusion by fake-foreign well-known trademarks because there is confusion of
consumers in the market.
There are some researches in the areas of well-known trademarks protection. Romel has made
research on the area of well-known trademarks relating to investment, particularly on
franchising.23 His work does not discuss the regulatory and institutional framework of the
21
Ibid
22
Tilahun Esmael ”Supra note 9”, P.112
23
Romel Moges, the Ethiopian Well-known Trademark Protection System: a Potential Threat for Foreign
Investment?, LL.M thesis, Haramaya University, 2017.
4
foreign well-known trademarks protection from the perspective of consumers. Thus this
research is different from the above study in its specific objective, methodology, and the
scope it encompasses. Tilahun also conducted a research on the area in a comparative study,
but it does not deal in detail with the well-known trademark protection in the country in
general and its implication on the protection of consumers in particular. 24 There are also other
similar researches on the area. But, they do not comprehensively deal with the well-known
trademarks from the perspective of consumers‟ protection.
The indispensible issues that should be addressed here are the legal and practical gaps in
protecting the consumers from confusion by fake foreign well-known trademarks. Thus, this
research has tried to cover and explore the sufficiency of consumers‟ protection from
confusion by fake-foreign well-known trademarks in its regulatory and institutional
framework and substantiated the law and the stock of relevant secondary sources of data with
assessment of the practice in Mekelle, Tigray.
1.3 Research Questions
This research tried to answer the following main research questions:

 Are the laws protecting consumers from confusion and deception by fake -foreign well-known
trademarks are sufficient in Ethiopia?
 Are the institutions, designated for protecting consumers from confusion and deception by
fake-foreign well-known trademarks in Ethiopia, framed in ways that enables to sufficiently
protect consumers?
 Are the consumers are really being confused by fake-foreign well-known trademarks,
specifically in the shoe and cloth market?
 What actions the institutions, entrusted with protecting consumers from confusion and
deception by fake-foreign well-known trademarks, are taking for addressing the practical
problems in Ethiopia?
24
Tilahun Esmael, “supra note 9”
5
1.4 Objective of the Study
1.4.1 General Objective
The general objective of the research is to assess the state of law and practice of consumer
protection from fake foreign well-known trademarks in Ethiopia.
1.4.2 Specific Objectives
 To review the legal frameworks and their sufficiency of consumers‟ protection from
confusion and deception by fake marks of the foreign well-known trademarks in Ethiopia.
 To assess the institutional framework of consumers‟ protection from confusion and deception
by fake marks of the foreign well-known trademarks in Ethiopia.
 To assess the existence of the consumers‟ confusion and the actions that the institutions
responsible for protecting consumers from confusion are taking for addressing the practical
problems, specifically on the shoe and cloth market.
1.5 Delimitation of the Study
The study is limited to the legal and institutional framework and the practice of protection of
foreign well-known marks in achieving its justification of consumer protection. Consumers
may face a problem of confusion on different products such as in mobile, shoe, cloth,
cosmetics, etc. However, it is a difficult to cover all of these products. Thus, the study is
limited to the shoe and cloth market only. It was selected purposely because there has been
increasing shoe and cloth producers who use marks of foreign well-known marks and
distribute their product in Ethiopia, which could thereby leading the consumers into
confusion.
As stated above, one objective of the study is to assess the practice of consumer protection
from confusion as an instance. Thus, the study area was limited to the Kedamay Weyane sub-
city, found in Mekelle city, Tigray region, Ethiopia. The place was selected for it is the main
trade center of the city and the region and, for there are high numbers of shoes and cloths sales
in the stated area. It was used to assess the instance of the practice. Besides, consumers may
6
face confusion by identical or similar marks in the market. However, in the assessment of the
practice, this study was limited only to the confusion by the identical marks for the reason that
similar marks are to be identified on case by case basis.
1.6 Significance of the Study
Though there are some researches in well-known trademarks, the problem in consumer
confusion is not given due consideration in our country. Thus, the research will have a good
contribution in providing insights for concerned bodies such as policymakers, lawmakers, and
EIPO authorities to consider and rethink the sufficiency of the existing legal infrastructure and
its enforcement in the area. And thereby, this research will have a contribution to solving the
problem, which the society may face confusion in purchasing cloth and shoe, for well-known
marks are used in the market by other producers.
Thus, this research will have a contribution to protecting the community in general and the
consumers in particular from confusion. Moreover, the research may serve as an input for
further researches in the area.
1.7 Methodology of the Study
1.7.1 Research Methods
To conduct this research, the researcher used doctrinal research methodology to reveal and
explain the legal and institutional framework of foreign well-known trademarks from the
consumers‟ protection perspective. Non-doctrinal research methodology is also used in
assessing the existence of consumers‟ confusion and the institutions in addressing the
practical problem. Besides, the Qualitative research approaches is used in the research.
1.7.2 Types of Data and Data Collection Techniques
To conduct the research, the researcher used both primary and secondary sources of data.
7
1.7.2.1 Primary Sources of data
The primary data are gathered from the Trademark registration and protection proclamation,
the trade competition and consumer protection proclamation, the trademark regulation, and
subsequent relevant Ethiopian laws. Furthermore, it is gathered from interviews made with
Director of the Tigray Region Trade Competition and Consumer Protection office and,
Director of Intellectual Property Office of Tigray Region, traders of shoe or/and cloth, and
buyers, and from observation of shoe or/and the cloth market.
1.7.2.2 Secondary Sources of Data
The writer also collected relevant information from secondary sources of data by reviewing
relevant literature from books, internet sources, cases, articles etc.
1.7.2.3 Selection and Sampling Technique
Purposive sampling method was applied to select informants from Tigray Region Intellectual
Property unit of Bureau of science and technology, and Trade Competition and Consumer
Protection Directorate experts, because they are expected to have adequate understanding of
the policy and legal infrastructure and its implication due to their official position and they are
mandated to entertain complaints, grievances from traders, consumers, and other interested
persons.
Traders were included as respondents through a purposive sampling method for they have a
high opportunity in observing the confusion of the consumer. In doing so, the informants were
selected from traders, who engaged in selling of original marks and fake marks. Buyers were
also included as informants for they take the main effect/injury of being confused. In doing so
they were selected using a convenience sampling method in the Shoe or/and cloth shops.
A Semi-Structured interview was used as a data-collection instrument from the informants.
The researcher also observed the market to see the existence of confusion of consumers in the
shoes and clothe market in some shops to substantiate the reliability information obtained
8
from the interviews. Shoe or/and cloth shops, which have products with original marks and
fake marks, were selected for the observation through a purposive sampling method.
1.7.3 Methods of Data Analysis
Finally, the researcher meticulously analyzed the primary and secondary data collected from
different sources. To that end, descriptive methods of data analysis are applied in respect to
the reviewed literature and interview findings. Finally, the legal analysis is used to assess and
analyze legal documents.
1.8 Ethical Considerations
The researcher respected the ethical responsibilities in conducting the whole research. All
statements taken from other works are cited effectively. And the respondents were informed
of that, it was their free consent and the research was to serve for an academic purpose. The
respondent‟s privacy was held confidential save for the informants who agreed for disclosure
of their identity.
Interviews were conducted by respecting all research participants according to their nature of
work and their title. Also, the researcher/interviewer avoided emotionality and bias while he
was conducting interviews with all participants of the research and while analyzing the
collected data.
1.9 Rule of Citation
The Mekelle University School of Law rules of citation used throughout the research.
1.10 Limitation of the Study
The researcher was tackled by the current COVID-19 pandemic disease in collection of
necessary data. To fill the gap, however, the researcher tried to collect the data through email
and phones.
9
1.11 General Working Definitions
Fake marks: identical or similar marks attached in a product, which doesn‟t emanate from the
real owner of the trademark.
Fake-foreign well-known trademarks: identical or similar marks attached in a product,

which doesn‟t emanate from the real owner of the foreign well-known trademark.
Identical marks: marks which are the same in all elements and characteristics with other
registered or well-known trademarks.
Similar marks: marks which confusingly/nearly resembles other well-known trademark or

registered trademark, which may confuse or deceive consumers.
Original marks: marks attached in a product, which emanated from the real owner of the
trademark.
Trademark: means any visible sign capable of distinguishing goods or services of one person
from those of other persons; it includes words, designs, letters, numerals, colors or the shape
of goods or their packaging or the combinations thereof;25 it does not include mark consists of
sound or smell.26
1.12 Organization of the Study
To make the work coherent and attractive, the final paper of the study is organized in five
chapters. The First chapter which is this part of the thesis provided the introductory part of the
study. Under the Second chapter, the theoretical and empirical literature related to the
protection of trademarks in general and well-known trademarks, in particular, are reviewed;
The Ethiopian protection of well-known trademarks is also discussed and analyzed under the
Third chapter. The Fourth chapter analyzed the foreign/international well-known trademark
protection in Ethiopia from the perspective of consumers‟ protection. Finally, the last chapter
deals with conclusion and recommendation.
25
Trademark Proclamation, Art 2(12)
26
Ibid, Art 6(1(b)
10
CHAPTER TWO
TRADEMARK LAWS AND CONSUMER PROTECTION IN GENERAL
2.1 Trademarks and Its Relation to Consumer Protection: Conceptual

Overview
Industrialization and growth of the market-oriented economy system allow competing

manufacturers and traders to offer to consumers a variety of goods in the same category.
Mostly they do products in different quality, price, and other characteristics without apparent
variances. Thus, consumers need guidance that enables them to consider the alternatives and
make their choice between the competing goods. Therefore, the products must include a sign
to distinguish from other products. Hence, “Trademark” comes to a picture.27
Trademarks have long been used by manufacturers, craftsmen, and traders to identify their
products and/or services and to distinguish them from goods and/or services of other persons
by making their signature or marks on their goods or services. 28 Later trademarks become
more valuable for they are associated with quality and consumer expectations in a product or
service.29
Businesses need trademarks to individualize their products to reach and communicate with
consumers. So, trademarks serve their owners in the advertising and selling of goods and/or
services. 30
Consumers also associate trademarks with the quality of a product (either low or high) and use
this information to identify the desired goods, distinguish the competing products, and make
27
World Intellectual Property Organization ( Herein after WIPO), introduction to trademark law & practice
the basic concepts :a WIPO training manual (Second Edi., 1993), P. 9
28
Phan Ngoc, Well-Known Trademark Protection: A Comparative Study Between The Laws Of The European
Union And Vietnam, The Faculty Of Law, Lund University(2011), P.26
29
Ibid, p.27
30
WIPO, supra note 27, P. 9
11
informed decisions to buy or leave.31 By enabling consumers to make informed decision,
trademarks encourage their owners to preserve and improve the quality of the products sold
under the trademark and meet consumer expectations. In a competitive market, the
disappointed consumer will not buy the same product again and the satisfied one will rely on
the trademark for his future purchase decisions. Thus, trademarks reward the producer who
constantly produces good quality products.32
Trademark is any word, slogan, design, picture, or any other symbol which indicates the
source of goods and differentiates the products of one businessperson from another.33 The
WIPO recommendation defines trademark as; “any sign that individualizes the goods of a
given enterprise and distinguishes them from the goods of its competitors.”34 Similarly, the
Swiss Law (Trademark Act) defined trademark as “signs which are appropriate to distinguish
the goods or services of one company from those of other companies.”35 Besides, it is defined
under the trademark act of EC as “any sign which is capable of being represented in the
register in a manner which enables the registrar and other competent authorities and the public
to determine the clear and precise subject matter of the protection afforded to the proprietor,
and of distinguishing goods or services of one undertaking from those of other
undertakings.”36 It is similarly defined by the TRIPS agreement as “any sign, or any
combination of signs, capable of distinguishing the goods or services of one undertaking from
those of other undertakings, shall be capable of constituting a trademark.”37
31
Minde Glenn Browning, International Trademark Law: A Pathfinder and Selected Bibliography, IND. INT'L
& COMP. L. REV. , Vol. 4 ,(1994), P.339 Available at: https://mckinneylaw.iu.edu/iiclr/pdf/vol4p339.pdf
last visited on January 03,2020
32
33
Milan Hossain, Trademark Protection: Bangladesh Approach, IOSR Journal Of Humanities And Social
Science (JHSS), Vol. 5, Issue 3, (Dec. 2012), P. 1-6
34
WIPO, supra note 27, P.9
35
Rentsch Partner, the courtesy of the Swiss Federal Institute of Intellectual Property, Definition of marks,
available at: https://www.rentschpartner.ch/en/trademark-law/trademark-protection/definition-of-marks last
visited on January 21,2020
36
Consolidated Version of the Trade Mark Act 1994 of the European Community (EC), (2018), Art 1
(Hereinafter the EC-TMR) available at:
https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/742949/Tra
de-Mark-Act-1994.pdf last visited on January 21,2020
37
The TRIPS Agreement, Art 15
12
Trademark law, which regulates the above, prohibits unauthorized uses of trademarks to
prevent the likelihood of consumers‟ confusion on the source of products and services by
using confusingly similar or identical marks.38
Thus, trademark is a property right that empowers the owner with the ability to exclude others
from using his/her mark. Moreover, the trademark owner has the right to license others to use
the mark.39 Trademark law also deters producers from confusing and deceiving consumers.40
This enables the consumers to distinguish the product and get information to make informed
decision on the particular product. Thereby, Trademarks encourage competition, promote
economic growth and raise the standard of living of the people.41
2.2 The Essential Functions of Trademarks Protection and Its Relation with
Consumer Protection
As stated above, most of the definitions provided by the different agreements and laws
comprise two interdependent elements: the distinguishing function and the origin function42
To personalize a product for the consumer, the trademark must show its source i.e. origin
function. This does not mean that it must show the actual person who produced the product.
Rather, it must indicate products with the same marks are produced from the same producer.43
This will enable the consumers to distinguish products of one enterprise from others.
The above could only be satisfied, if the mark enables the consumer to differentiate a product
sold under the mark from the goods of other enterprises presented on the market i.e.
distinguishing function. This shows that the two functions cannot be separated.44
38
Graeme W. Austin, tolerating confusion about confusion: trademark policies and fair use, ARIZONA LAW
REVIEW, Vol. 50, (2008), P. 157-158
39
Elizabeth Cutter Bannon, revisiting the rational basis of trademark protection: control of quality and dilution-
estranged bedfellows?, The John Marshall Law Review, Vol. 24 (1990), P. 71
40
Mathias Strasser, Rational Basis of Trademark Protection Revisited: Putting the Rational Basis of Trademark
Protection Revisited: Putting the Dilution Doctrine into Context, Fordham Intellectual Property, Media and
Entertainment Law Journal, Vol. 10, No. 2 (Nov, 2016), P. 420
41
Elizabeth Cutter Bannon, Supra note 39, P. 75
42
43
Ibid
44
Ibid
13
Trademark owners register trademarks to exclusively gain the benefit of their investments.
Simultaneously, consumers will benefit from the reliability of the mark. This confirms the
existence of several interests that should be considered in trademark protection systems i.e.
the consumers‟ and producers‟ interest.45
Generally, the essential function of trademarks can be sub-divided into two interdependent
functions: the legal function and the economic function.
2.2.1 The Legal Function
One of the functions of trademarks is to assure consumers the source of the marked products.
This is achieved by enabling consumers to distinguish the product or service from others
which have another origin.46 When a symbol is registered as a trademark for a specific good
or services, any product marked with this trademark is deemed to originate from the same
company. To serve a trademark for origin identification function, the owner of a registered
mark should be granted the right to exclude others from using similar trademark on goods and
services.47
From the consumer‟s perspective, the exclusivity of trademark use indicates that the marked
products accessible in the market would have originated from the same source. This
functional analysis of trademarks was employed in the most influential legal trademark
instruments including the Lanham Act, the EU trademark directive, and the German
Trademark Act.48
The Lanham Act of the United States, the EC legislation Council Directive 89/104
(Trademark Directive) and Council Regulation 90/94 (Trademark Regulation) and the
German Trademark Act (GTA) defines their respective trademark scopes basing on the
question that what is the most fundamental function served by trademarks is their ability to
identify and to distinguish products.49
45
Dima Bisma, The Nature, Scope, and Limits of Modern Trademark Protection: A Luxury Fashion Industry
Perspective, (2016), P. 103
46
Ibid, P. 104
47
Ibid, P. 105
48
Ibid, P. 105
49
Mathias Strasser, Supra note 40, P. 379
14
Under the United State Lanham Act's legislative history, it is provided that,
“The purpose underlying any trademark statute is twofold. One is to protect the
public so it may be confident that, in purchasing a product bearing a particular
trademark which it favorably knows, it will get the product which it asks for and
wants to get. Secondly, where the owner of a trademark has spent energy, time, and
money in presenting to the public the product, he is protected in his investment
from its misappropriation by pirates and cheats.”50
This is also reinforced by the statement that “the protection of trademarks originated as a
police measure to prevent the grievous deceit of the people by the sale of deceptive goods, and
to safeguard the collective goodwill and monopoly of the gild”. This statement leads different
scholars to interpret as the basic reason/ rationale of the trademark law is the protection of the
public from confusion and deception, with the secondarily protect trademark owners'
expenditure of energy, time, and money.51 Section 45 of the Lanham Act defines trademarks
as names, symbols, and other devices that are able “to identify... goods and distinguish them”.
The EC trademark legislation and the GTA contain similar definitions.52
However, others also state that this kind of interpretation is a very narrow interpretation of the
Lanham Act's legislative history.53 However, we can see that protection of the public interest
from deception is one main purpose of the trademark regulation, even though it is not the only
assumed purpose.
Generally, the function of trademarks is to identify goods or services for the customer so that
the customer can identify goods and services of one producer from others. To accomplish this
function trademark should have the ability to distinguish itself from others.54
The function of indicating origin is linked with distinguishing features, as the trademark
enables consumers to distinguish goods or services carrying that trademark with others.55
50
Elizabeth Cutter Bannon, Supra note 39, P. 72-73
51
Ibid, P. 73
52
Mathias Stasser, Supra note 40, P. 380
53
54
Hà Th Nguyt Thu, Supra note 18, P. 11
55
Ibid
15
When consumers see a mark, they know where the product or service came from. Moreover,
when a consumer sees a trademark, they remember good or bad experience of the goods or
services bearing that trademark.56
The trademarks‟ origin function is not to show that a product emerges from a particular
source, but rather that all products attached to the mark emerge from the same source because
consumers are not aware of the actual origin of the products and interested only on the
connotations of the mark.57
This approach has been upheld by the CJEU in Hoffman-la Roche. The court explicitly noted
that “a trademark must offer a guarantee that all the goods or services bearing the same
trademarks have originated under the control of one undertaking which is responsible for its
quality”. The source-identifying function of a trademark can, therefore, be explained in light
of the benefits it confers to consumers concerning eliminating the likelihood of confusion and
the benefits it grants trademark owners.58
Therefore, trademarks have the power to protect consumers from any risk of source confusion.
It suffices to state that legally protected trademarks add wealth to the society through the
prevention of confusion and deception.59
Frank I. Schechter advocates in the article "The Rational Basis of Trademark Protection" that
the real function of a trademark is to identify products with good quality and thereby to
continue their purchase by the public. Thus, the main function of the trademark is to assure
the quality of products.60 Consumers are adversely affected when they rely on a trademark to
identify, but mistakenly purchase products bearing fake-mark. Such confusion increases
consumer costs in exploring a good quality, and even it may expose the consumers to health
problem.61 According to his proposition, the importance is the consumers‟ ability to know that
56
Ibid
57
Dima Bisma, Supra note 45, P. 106& 107
58
Ibid, P. 107
59
Ibid, P. 109
60
61
Maxim Grinberg, the WIPO joint recommendation protecting well known marks and the forgotten goodwill,
Chicago-Kent Journal of Intellectual Property, ) Vol. 5, (2005), p. 1-2 Available at:
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=701504 last visited on January 29, 2020
16
the identity of the product reaches them, thus, trademark will do that by enabling them to
choose their desire i.e. what increases their satisfaction.62
Protecting the consumer is central to the utilitarian rationales for trademark law that dominate
today.63 The primary importance of a trademark is given to the function of origin indication. It
involves in providing information to consumers that all the products bearing a particular
trademark come from the same source.64 The consumer protection rationale has also been
advanced by anti-dilution laws to protect consumers against incurring search costs. 65 If
consumer interest were not necessary to trademark rights, a firm‟s rights in its marks would
come close to being a right simply to reproduce the mark.66 Law and economics theorists
describe that via identifying function, trademarks reduce the search costs of consumers.67
Aleksandra pointed that the basic function of the trademark is a guarantee to the consumers of
the identity of the origin of the goods bearing a certain trademark, by enabling them to
differentiate the goods or services of a certain origin from the goods or services of another
origin without any risk of confusion. In this role, the trademark is a guarantee that all the
goods or services bearing the mark have been produced or supplied under the control of a
particular company.68
Trademark is a symbol that can be easily captured and remembered. Thus, it speeds up
thinking, communicating, and buying. Some scholars argue that in modern marketing the
main function of a trademark is to indicate the degree of quality, and, secondarily, to indicate
origin or source of the product. Consumers rarely know or care about the origin/ source of a
product. Whether the level of quality is high or low or average is not the issue; it is the
consistency or continuity of that quality which is important to the consumer.69
62
Mohammad Amin Naser, Reexamining the Functions of Trademark Law, Chicago-Kent Journal of Intellectual
Property, Vol.8 ,issue 1, (2008), P. 99
63
Graeme W. Austin, Supra note 38 , P. 162
64
Aleksandra Nowak-Gruca, Consumer Protection Against Confusion in The Trademark Law, European Journal
of Economics, Law and Politics, Vol.5,No.1 (March 2018) P. 7-8: Available at:
https://www.ceeol.com/search/viewpdf?id=648794 last visited on: February 04, 2020
65
Graeme W. Austin, Supra note 38, P. 159
66
Ibid, P. 166
67
Mathias Strasser , Supra note 40, P. 380
68
Aleksandra Nowak-Gruca, Supra note 64, P. 8
69
Elizabeth Cutter Bannon, Supra note 39, P. 86-87
17
The identifying function also mitigates the moral hazard problem. Rational consumers want to
buy products which have the highest quality available at that price; whereas producers try to
sell the lowest quality they can to reduce their costs. If consumers had no means to
differentiate good products, they would risk picking the bad products. Economists call this the
adverse selection problem.70
To be free from this problem, consumers would most likely ask for lower prices to offset the
risk of making an adverse selection. However, this in turn would make it impossible for
producers to come up with fully satisfactory products. Therefore, producers offer products
with a lower quality. Hence, highest quality products would gradually be replaced by medium
and poor quality products. 71
By making products identifiable, trademarks enable producers to continue with their standard
quality and prevent producers from cheating consumers. To this end, the law has to ensure
that producers do not use their trademarks in ways that would make difficult for consumers to
differentiate which mark represents for which product.72
However, others also state that quality is subjective, rather than objective, and differs
according to individual consumers. The source and origin function of trademarks is the
primary function of trademarks73 whereas the quality, advertising, and the informative
functions are secondary functions and are attached to the source and origin function. 74 The
proponents of the source or origin function state that any trademark system should provide
protection for trademark owners, and, at the same time, protect the rights of the consuming
public and other traders.75 The essential function of a trademark is being a source indicator i.e.
to guarantee the identity of the origin of the trademarked product to the consumer by enabling
him to differentiate that product from products of another origin.76
70
71
Ibid, P. 381-382
72
Ibid, P. 382
73
Mohammad Amin Naser, Supra note 62, P. 99-100
74
Ibid
75
Ibid
76
Miquel Peguera, trademark functions and trademark rights,(unpublished), 2014, P. 4
18
Securing goodwill of the producers is also one purpose of the trademark protection. Goodwill
is an asset of the company which exists in the minds of the buying public, where buyers trust
the constancy of quality emanating from a particular producer.77 Most commonly, goodwill is
defined as the business reputation and the special value attached to a mark when the seller‟s
investment in advertising and quality produces customer loyalty.78 Trademarks protection
secures the goodwill of the business of the mark owner and protects the ability of consumers
to distinguish among competing producers. Trademark laws have a function of protecting the
individual reputation and goodwill which the owners of the mark build for their goods in the
market.79
Under the misappropriation model of trademark, trademark law aims to prevent confusion and
unauthorized misappropriation. A person who uses the others‟ mark to attract customers will
be considered as improperly exploiting the goodwill of letter‟s business.80 There may be
incidences of unfair trade activities, such as infringement, by unauthorized parties desiring to
benefit by exploiting the goodwill of another‟s trademark.81
Thus, though scholars have a difference in the main aim of trademark protection, they all not
disagree on its function of enabling the consumers to distinguish the source of the product,
thereby preventing, at least reducing, consumer confusion.
2.2.2 Economic Function
There are two overlapping theories under the economic functions; the search cost theory
provides that protection of trademarks will result in a decrease of costs and risks that may
result from the information asymmetry of the sellers and the buyers. The quality assurance
theory on the other hand provides that trademarks represent information about the quality of
the products to which they are attached.82
77
78
Dima Bisma, Supra note 45, P. 72
79
80
Dima Basma, Supra note 45, P. 72
81
82
19
2.2.2.1 Reducing the Search Cost
Lawyers and economists stated that trademarks enable consumers to identify products, thus, it
reduces the search costs of consumers.83
To obtain economic equilibrium in a freely competitive market, decisions should be made

based on information; consumers must have reliable information about products. Information
asymmetry between the sellers and buyers increases the risk of mistake and makes it difficult
for consumers to prove the quality of the products.84
The search cost theory considers trademarks as mechanism for improving the information of
consumers about a particular product and as an information vehicle for producers to inform
their consumers about their products. Based on the search cost theory, consumers are the main
beneficiaries of trademark protection. Next, producers are secondary beneficiary.85
Search costs associated to purchase can take a variety of forms. These include pecuniary costs
which include transportation and experiencing a range of products, psychological costs which
include consulting, deciding, and testing new products, and communication costs. If
consumers do not have information, they are required to invest for information gathering. For
instance, a consumer buying a luxury bag needs to engage in a long process of exploring the
quality of the bag, the type of leather, and the other unobservable qualities. Even with the
examination process, the consumer may be mistaken. Thus, the information asymmetry could
lead to wrong decision making and if repeated by many consumers, it could lead to market
failure.86
Thus, Trademarks are used to solve the information asymmetry that could exist between the
sellers and the buyers. Trademarks help consumers remember attributes that they have learned
about the product and, thus, make informed decision avoiding adverse selection.87
83
Mathias Strasser , Supra note 40, P. 380
84
85
Ibid
86
Ibid, P. 114
87
Ibid, P. 115
20
2.2.2.2 The Quality Assurance Function
Though traditionally quality was measured in terms of excellence, quality increasingly is

measured against the value relative to the price or the value relative to variety features by
consumer preferences.88
Recently, however, arguments have been developed that the excellence of the product and
price and aesthetic dimensions of quality cannot be neatly separated. Thus, quality includes all
characteristics of goods/services to which consumers attach value such the aesthetics aspect,
price of the product, and the emotional impacts.89 Thus, trademark facilitates the market by
enabling the producers to distribute information about the quality of a product, which
ultimately reduces search costs.90
The economic justification of trademarks that have dominance, until recently, of the legal
sphere is the utilitarian which considers trademarks as a sign of quality.91 As Schechter
proposed that the main role of trademarks is to „identify the product as satisfactory‟92 i.e. the
product has a quality which satisfies the purchaser.
Trademarks provide guarantee for the consumers that goods bearing the same marks have
similar nature, quality, aesthetics, and characteristics. Since trademarks guarantee the
consumers that all products bearing these trademarks emanate from one source, trademarks
become a promise, which the consumers expect, including a consistence set of nature, quality,
aesthetics, and characteristics.93
Thus, the role of a trademark as a quality assurance tool stands on the origin function. Thus,
Trademarks become indicators of what the consumers are going to purchase rather than who
manufactured it. Some argue that the ability of trademarks to indicate quality grants benefit
only to consumers.94
88
Ibid, P. 120-121
89
Ibid, P. 121
90
Ibid, P. 121-122
91
Ibid, P. 122
92
93
Dima Basma, Supra note 45, P. 122-123
94
Ibid, P. 123
21
2.3 Development of the Modern Functions of Trademarks
In a development of modern functions of trademarks, the CJEU had a great role. In the case of
L‟Oréal v. Bellure, the CJEU provided clear insights into modern functions. In this case, the
court explicitly provided three distinct additional functions of trademarks: communication,
investment, and advertising.95
2.3.1 Communication Function
After trademark identifies a certain category of products, it communicates with consumers by

enabling them to associate all the available information with the respective product that bears
the mark.96 Trademarks protect brands, make them visible and foster their distinctiveness.97
Communication as described in modern CJEU case law is the result of other functions.98
Through trademarks, companies distribute the desired information to the market about their
brand, its values, and quality.99 The participants in the market must have access to the relevant
information relating to the products.100
It is a challenge for consumers to find out real information about the product's quality. In most
cases, pre-purchase investigations are difficult because of the fact or they are too expensive.101
At the time that the consumers come across a new product that bears the same mark as a
different type of product that they knew, it is the communication function, not the identifying
function that gives them an idea of what that product is like.102 Trademark communicate to
consumers that a particular product emanates from a specific source, and the consumers will
have the chance to know the characteristics that associate with the source.103
95
Ibid, P. 142
96
97
Dima Bisma, Supra note, 45, P. 146
98
Ibid, P. 145
99
Ibid, P. 146
100
101
Ibid ,P.384
102
Ibid ,P. 385
103
Ibid ,P. 386
22
As it has been discussed in the search cost function, by enabling to identifying products and
communicating with consumers, trademarks alleviate the problems of moral hazard and
adverse selection.104
2.3.2 Advertisement Function
Besides the above functions, trademark owners use the trademark to communicate with the
consumer by attaching the mark on the goods i.e. advertising. This could be described as the
advertising function of the trademarks.105
Creation of one‟s market through established symbol shows that people float on a
psychological current engendered by the various advertising devices, one it is trademark.106
Companies use trademarks to make their products easily identifiable and known by many
people.107 Trademarks are now considered as a best and successful mechanism advertising
strategy.108
2.3.3 Investment Function
Strong brands which have good reputation provide opportunities for brand extensions through
licensing and franchising, which are recognized as a trademark style of management. Thus,
companies with good reputation of trademarks can form alliances and networks within the
firm and with other firms in the market. In this sense, reputable trademarks permit their
owners to utilize the power of the mark in new forms of investment.109
2.4 Establishment of the Trademark Ownership
Trademark ownership could be established through registration (first to file rule) or use (first-
to-use system).110. The Paris Convention imposes an obligation on the contracting parties to
104
Ibid
105
106
Dima Bisma, Supra note 45, P. 158
107
Ibid, P. 170
108
Ibid, P. 172
109
Ibid, P. 177
110
Leah Chan Grinvald, A Tale of Two Theories Of Well-Known Marks, Vanderbilt Journal of Entertainment and
Technology Law, Vol.13 (2010) p.9
23
have for a trademark register stating that “the conditions for the filing and registration of
trademarks shall be determined in each country of the Union by its domestic legislation”. 111
Such requires the organization of the trademark office, which indirectly shows that the Paris
Convention recognizes the establishment of ownership through registration. However, it does
not provide whether to protect by registration only or by use. As we can infer from the term
“The owner of a registered trademark shall have the exclusive right …”112 The TRIPS
agreement also provides that a trademark is protected after registration as it confers the
exclusive rights to a registered owner. However, it also tries to recognize the possibility of
Members making rights available on the basis of use.113
In countries that have traditionally based trademark protection on use, the registration of a
trademark merely confirms the trademark right which has been acquired by use. The first user
has priority in a trademark dispute rather than the one who first registered the trademark. This
approach has been chosen by the United States of America, the Philippines, Indonesia, and all
countries, which follows the traditional British model (Hong Kong, India, Singapore, etc.).114
2.5 Requirements for Protection/ Registerable signs
As defined above, trademarks are signs which enable consumers to differentiate the goods or
services of one company from those of others.115 Thus, to be accepted as a trademark, there
must be a sign and it must be distinctive.
2.5.1 Signs
Any sign that can serve to differentiate goods of one company from others is capable to serve
as a trademark. Trademark laws should not, therefore, draw up a comprehensive list of signs
that can be admitted for registration.116 The TRIPS agreement states that trademark is any sign
which may, in particular, consist of words (including personal names), designs, letters,
111
The Paris Convention, Art 6(1)
112
The TRIPS Agreement, Art 16(1)
113
Ibid, Art 16(1), 3rd Sentence
114
WIPO, Supra note 27, P. 11
115
Ibid, P. 15
116
Ibid
24
numerals, colors, sounds, or the shape of goods or their packaging. 117 The Swiss law of
trademark, for instance, does not restrict the shape or medium of a trademark as long as this
sign is able to be used as a distinguishing feature.118 It also provides that the signs which must
remain at the disposal of the public, as well as the competitors (common property, public
domain), may not be monopolized.119 The principle that should be adhered to is that the sign
must serve to distinguish the goods of one company from others.120
Countries may provide restrictions for marks that can be registered for practical purposes.
Most countries provide that signs only registered as a trademark if it can be represented
graphically, since only they can be physically registered and published in a trademark journal
to inform the public of the registration of the trademark.121 The Paris Convention provides that
the conditions for the filing and registration of trademarks shall be determined in each country
of the Union by its domestic legislation.122 The TRIPS agreement provides that the Members
of the agreement may require, as a condition of registration, that signs be visually
perceptible.123
2.5.2 Distinctive Signs
Trademark serves to distinguish the goods of one company from others, so, in order to
function as a trademark, it must be capable of distinguishing i.e. distinctive. A sign is
considered as not- distinctive if it cannot help customers in identifying the product of one
company from others.124
The distinctiveness of a particular mark is evaluated in relation to the goods or services, to

which the trademark is applied. For instance, the term “Mango” is not distinctive for juice
products, rather it is more distinctive if it is used for unrelated products for example for TV,
117
EC-TMR, Supra note 36
118
Rentsch Partner, Supra note 35
119
Rentsch Partner: the courtesy of the Swiss Federal Institute of Intellectual Property, Definition of marks,
available at: https://www.rentschpartner.ch/en/trademark-law/trademark-protection/requirements-for-
trademark-protection last visited on January 21, 2020
120
WIPO , Supra note 27, P. 15
121
Ibid, P. 16
122
The Paris Convention, Art 6
123
The TRIPS agreement, Art 15(1)
124
WIPO , Supra note 27, P. 17
25
refrigerator, etc.125Besides, understanding of the persons or consumers for whom the sign is
addressed should be taken into consideration.126
Generally, the main issue in establishing the distinctiveness of the mark is whether it is
capable of distinguishing the goods to which it is to be attached.127
Generic terms, descriptive signs, references to geographical origin, letters, numerals, and basic
geometrical shapes are some of the criteria to be taken to identify the marks‟ non-
distinctiveness.128
2.6 Scope of Protection
IPRs in general and Trademark rights, in particular, are territorial in application 129, which
means that their protection is dependent on the registration of each mark on each country.
There is no universal/global protection for a single registration.
For protection is based on the laws of each individual country, the scope of trademark
protection is geographically limited.130 Foreign trademarks are usually acquired by filing
applications in national trademark offices. A trademark has a separate existence in each
sovereign state in which it is registered and legally recognized.131
Under the Paris Convention, trademark owners must obtain separate trademark protection in
each Paris Union country. It does not provide protection in all members by a single
registration in one member country.132 Foreign trademark registration was made easier
through an international trademark system established by The Madrid Agreement Concerning
the International Registration of Marks (Madrid Agreement). Since the Madrid Agreement
125
Ibid
126
Ibid
127
Ibid
128
Ibid, P. 21- 33
129
Carlos A. Braga and Carsten Fink, Supra note 12, p.441
130
Minde Glenn Browning, supra note 31, P. 340
131
Ibid, P 341
132
Ibid, P 342
26
flows from the Paris Convention, to be a member of the Madrid Agreement, countries must be
members of the Paris Union.133
A trademark owner may file a single international registration application, via his/her home
country trademark office, which entitles some or all of the individual countries within the
Madrid Union.134
WIPO held a conference in 1971 for Madrid Union members. The members did not want to
make amendments to the Madrid Agreement; therefore a new treaty, the Trademark
Registration Treaty (TRT), was developed. The TRT was the first attempt to develop an
international system for all Paris Union members. The TRT was a filing treaty designed to
reduce the complexity of registration application filing and of administering trademark
registrations. It was not designed to change substantive trademark law. The TRT did not
create a true multinational registration.135
The TRT was only ratified by the five Paris Union countries which brought the treaty into
force and therefore is considered a failure.136
The same to the Paris Convention, TRIPS, and NAFTA also establish minimum standards of
protection for intellectual property in general, and trademarks in particular, retaining the
principle of territoriality.137
133
Ibid
134
Ibid
135
Ibid, P 345-46
136
Ibid, P. 346
137
Ibid, P. 358
27
2.7 Protection of Well-known Trademarks and Its Relation to Consumer
Protection
2.7.1 Overview of Well-known Trademarks
Marks are designated as well-known if they are known by many people of the relevant sector
of the public i.e. by those who consume the respective goods and/or services. However, a
specific trademark is expected to fulfill the criteria set by a convention or national laws. There
are words that are used interchangeably with well-known marks such as Famous Marks,
Trademarks with reputation, etc. Famous marks, which are recognized as a special category of
well-known marks, considered to have a higher degree of reputation than well-known marks
and therefore deserve a broader scope of protection against unauthorized use on non-
competing goods or services in addition to the similar or identical goods or services. 138 The
well-known marks, however, are only protected from similar or identical goods and services,
bearing identical or similar marks. A famous trademark used for goods or services which have
been continuously and internationally distributed and marketed throughout the world, causing
them to become globally identified in relation to a specific source or quality of goods or
services.139
A well-known trademark in the sense of Art.6bis of the Paris Convention is a trademark which
as a consequence of its widespread use in the market and its advertising has been widely
diffused without losing its distinctive character and is well-known by the consumers of those
goods or services for which the trademark is protected.140
On the other hand, a trademark with a reputation refers to a mark as a result of its widespread
use in the market is not only recognized by consumers in its respective sector but has a
138
139
Ibid
140
Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union Trade
Mark, June 14, 2017, Art 8(2) (c), Available at: https://eur-lex.europa.eu/legal-
content/EN/TXT/PDF/?uri=CELEX:32017R1001&qid=1580375021005&from=EN last visited on January
30, 2020
28
general reputation in the Community. These trademarks benefit from protection even beyond
the similarity of the goods and services.141
As mentioned above, the intellectual property rights in general and trademarks protection in
particular has territorial application.142 Today‟s fact shows that getting global protection by a
single application is not possible.143 In many countries, getting a trademark registered is the
only way to get statutory rights in national jurisdictions.144 Ethiopian trademark also provides
that, trademarks get protection only when they get registered in EIPO.145
Since protection is based on the laws of each individual country, the scope of trademark
protection is geographically limited.146 There are several international systems that simplify
the applicable administrative procedures through international agreements (which are
147
discussed above), although they have not created the worldwide trademark system. A
trademark therefore has a separate existence in each sovereign territory.148
Though traditional principle for trademark protection is limited to the geographical territory
where it has been registered, consumers move freely across borders, and information has been
exploited over the internet and other means of communications such as mainstream
Medias. As a result, consumers may know the products bearing a well-known trademark even
the products are not available in the country.149 Thus, a well-known trademark may be
imitated or pirated in a country in where it is not registered or used.
The traditional scope of trademark law was not sufficient to protect well-known marks against
unfair attempts to take profit from that reputation. Thus, protection of well-known trademarks
has become a core issue both domestically and in relations among countries.150
141
Ibid, 8(5)
142
Carlos A. Braga and Carsten Fink, Supra note 12, P.441
143
Ibid
144
Oorja Jain, Protection of Well-Known Marks: WIPO Joint Recommendation,
https://www.khuranaandkhurana.com/2020/01/27/protection-of-well-known-marks-wipo-joint-
recommendation/ last visited on January 29, 2020
145
The Trademark Proclamation, Art 4
146
Minde Glenn Browning, supra note 31, P. 340
147
Ibid
148
Ibid, P. 341
149
150
Ibid
29
As an effort to address this problem and as an exception to the general principle of the
requirement of registration, well-known marks get protection without registration in different
countries, provided the requirement imposed by the particular country are fulfilled.
As provided under the Paris Convention, member countries of the convention shall protect the
well-known marks though they are not registered based on the law of the particular country,
provided that if the country provided it in its legislation.151 The same can also be inferred from
the TRIPS agreement152, as it simply broadened the scope of protection which was provided
under the Paris Convention (to be discussed later in detail.)
Many counties have already provided the protection of unregistered well-known trademarks
under the same or similar conditions as the registered well-known trademarks. However, the
manner of expression of the term and the conditions for protection under their legislation
varies from country to country.153
2.7.2 Rationale for Protection of Well-known Trademark
Currently, well-known trademarks have high commercial value for trademark owners.
Therefore, the risk of being copied and the demands for effective protection for well-known
trademarks are increasing. Besides, for consumer, well-known trademarks act as a tool by
which to identify the “class” of the consumers.154
Trademarks become widely known by intensive and extensive degree of promotion and have
been placed in the minds of consumers, which contributes much for increased sales of
products bearing the mark. Hence, the protection of well-known trademarks requires the
expansion of legal principles beyond the traditional scope of trademark law.155
Besides, increasing numbers of goods and services appear on the market, which are similar to
those products marked with well-known trademarks. It creates, therefore, consumer confusion
and impairs their ability to choose goods and services by relying on the marks as indications
151
See the Paris Convention, Art. 6bis
152
See also TRIPS Agreement, Art 16(2) & (3).
153
Danguolė Klimkevičiūtė, the Legal Protection of Well-known Trademarks and Trademarks with a
Reputation: the trends of the legal regulation in the EU member state, journal of Social Sciences Studies,
Vol. 3 No.7, (2010), P. 229–256.
154
155
Ibid
30
of origin and quality not only in the countries where the goods and/or services are available,
but also in the countries where the products are not available but becomes well-known
through advertisements and other modalities of communication.156 Thus, to protect the
producers with well-known trademarks from other producers who try to use similar or
identical marks and to protect the consumers from confusion by those fake well-known
trademarks, having a special law which protects well-known trademarks without requirement
of registration is required.
2.7.3 International Framework of Well-known Trademarks Protection
2.7.3.1 The Paris Convention
The Paris Convention includes provisions related to all industrial property rights and
establishes a uniform rules that must be observed by the members to provide minimum
protection in their domestic legislations.157
The protection of well-known marks was included for the first time under the Hague text of
the Paris convention in 1925. The protection for well-known trademarks is found under
Article 6bis of the Paris Convention.158
Article 6bis of the Paris Convention is only applicable to goods i.e. it does not cover trademark
use for services159 based on the provision, to be protected as well-known, there is no
requirement for registration with respect to well-known trademarks in the country where
protection is sought.160 However, the trademark must be recognized as well-known in the
country where the protection is sought161
Trademarks identical or similar to a well-known mark and which may cause confusion shall
be refused for registration and canceled if it has been already registered.162
156
Phan Ngoc, Supra note28, P. 55
157
Tilahun Esmael, Supra note 9, P.98
158
159
Ibid, P. 16
160
Ibid, P. 15
161
Ibid
162
Ibid, P. 16
31
The use of a well-known trademark for unrelated goods is not prohibited based on this
convention. The scope of protection of well-known trademarks is limited to preventing the use
or registration of a third party‟s well-known trademark for similar or identical goods.163
Article 6bis provides limited protection for well-known trademarks. However, it is insufficient
to meet the current needs in respect of protection of well-known trademarks from confusion.
For instance, services are not covered in this article and the protection is limited to well-
known trademark protection within similar or identical goods and the convention does not
provide the criteria to identify the well-known aspect of one trademark in a particular member
state.164
2.7.3.2 TRIPs Agreement
The Agreement on Trade-Related Aspects of Intellectual Property Rights of 15 April 1994

(The TRIPS Agreement) provides legal standards for protection of well-known trademarks.
To make enhanced protection of well-known trademarks on an international level, Article
16(2) and (3) of the TRIPS Agreement broadens the scope of Article 6bis of the Paris
Convention.165
Article 16 is considered as it has supplementary role to Article 6bis of the Paris Convention166
because of three reasons; first, the scope of well-known trademark protection extended to
services while Article 6bis regulates only goods.167
Second, the TRIPS Agreement takes in to account the knowledge of a trademark in relevant
sectors of the public, which is not provided under the Paris Convention.168Third, it also
extends the scope of protection of well-known trademark in the case of dissimilar goods or
services.169
163
Ibid
164
Ibid
165
Ibid, P. 17
166
It should be noted that since Article 2 of the TRIPS Agreement requires respective provisions of the Paris
Convention be automatically applied to WTO member countries as well, broad national protection can be
expected in WTO member countries (a substantial number of countries are member to both the Paris
Convention and WTO) in respect to Article 16(2) and (3) of the TRIPS Agreement.
167
Ibid P. 17-18 and see Art 16(2) of the TRIPS Agreement
168
Ibid and see Art 16(2), Second Sentence of the TRIPS Agreement
169
Ibid and see Art 16(3) of the TRIPS Agreement
32
2.7.3.3 WIPO Joint Recommendations on Protection of Well-known Marks
After the coming of the TRIPS Agreement into effect, all member countries of WTO as well
as the Paris Convention had an obligation to protect well-known trademarks.170
Though the TRIPS Agreement provides one criterion to identify the well-known aspect of a
trademark i.e. knowledge of the relevant sector of the public, 171the Agreement leaves open as
to which sector of the public is relevant, how specific the relevant sector should be, to what
factors are to be considered in the determination of when a mark qualifies as well known.172
Except this principle, the TRIPS agreement & the Paris Convention and legislation of several
member countries does not provide the criteria for determination of the well-known aspect of
a trademark. Thus, WIPO prepared Joint Recommendation concerning provisions on the
protection of well-known marks.173 The Joint Recommendation is supplementary for the
protection of well-known marks provided under the provisions of the Paris Convention and
TRIPS Agreement.174
The Joint Recommendations provide guidelines for determination of the well-known aspect of
the mark to be used by a member state.175 The Joint Recommendation though it elaborate the
guidelines for determining whether the mark is well-known, it does not provide any definition
for a well-known mark.176 It set a list of factors177 that an authority has to take into
consideration when deciding whether a particular mark is well-known or not. However, those
lists are not cumulative 178
170
Ibid, P. 19
171
The TRIPS Agreement, Art 16(2) second sentence
172
173
Ibid
174
Oorja Jain, Supra note 144
175
Hà Th Nguyt Thu, Supra note 18
176
Oorja Jain, Supra note 144
177
WIPO, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
(Sept. 1999), Art 2(1)(b) and 2(1)(c)
178
Ibid, Art 2(1)c), reads as “The factors provided under Art 2(1)(b), are guidelines to assist the competent
authority to determine whether the mark is a well-known mark, are not pre-conditions for reaching that
determination. Rather, the determination in each case will depend upon the particular circumstances of that
case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In
still other cases none of the factors may be relevant, and the decision may be based on additional factors that
are not listed in subparagraph (b), above. Such additional factors may be relevant, alone, or in combination
with one or more of the factors listed in subparagraph (b), above.”
33
As provided under the WIPO Joint Recommendation, a mark can only be considered as well-
known if it is well-known in at least one of the relevant sectors of the Member States.179 A
member state, however, in certain cases requires that a well-known mark must be considered
as well-known by the public at a large.180
To conclude the mark as a well-known mark, it is not necessary to see whether the mark is
being registered or whether it is being used or whether there is an application filed for getting
the same to be registered.181 Besides the recommendation includes that in a case that well-
known mark is not registered in a country where its protection has been sought, it must be
protected against the use of an identical or similar mark against dissimilar goods or
services.182
2.7.4 Determination of Well-known Trademarks
2.7.4.1 Criteria for Determination of Well-known Trademark
The Paris Convention does not provide any guidance on how to determine the well-known
aspect of a trademark. But, the TRIPS Agreement states that “the WTO members shall take in
to account the knowledge of the trademark in the relevant sector of the public, including
knowledge in the Member concerned which has been obtained as a result of the promotion of
the trademark.”183 However, it is not clear what is meant by “relevant sector of the public”,
thus, could be interpreted differently by different members. WIPO, therefore, provided a
recommendation of criteria for determining well-known trademarks.184 The degree of
179
Ibid, Art 2 (2)(b)
180
Ibid, Art. 4 (1)(c)
181
Ibid, Art 2(3)(i)
182
Ibid, Art 4(1)(b)
183
184
See WIPO, Supra note 177, Art 2, reads as “ (1) [Factors for Consideration] (a) In determining whether a
mark is a well-known mark, the competent authority shall take into account any circumstances from which it
may be inferred that the mark is well known.
(b) In particular, the competent authority shall consider information submitted to it with respect to factors from
which it may be inferred that the mark is, or is not, well known, including, but not limited to, information
concerning the following:
1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
2. the duration, extent and geographical area of any use of the mark;
3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity
and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark,
to the extent that they reflect use or recognition of the mark;
34
knowledge by the relevant sector of the public, value, the duration and geographical coverage
of the mark are some from the criteria.
Those factors are nether exclusive nor cumulative but rather they are interdependent, whether
or not a trademark is well-known should be judged by taking all of the factors, which means
that even if one of the factors is weak in a given case, it could be compensated for by the
strength of the other factors.185
2.7.4.2 Ways to Get Well-known Trademark Recognition
The protection of well-known trademarks rests upon the recognition of well-known status.186
There are two ways, for instance in Japan, for trademarks to be acknowledged as a well-
known trademark. One of these is to file an application as a defensive mark and obtain a
defensive mark registration. The other is recognized through court decisions and appeal/trial
5. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was
recognized as well known by competent authorities;
6. the value associated with the mark.
(c) The above factors, which are guidelines to assist the competent authority to determine whether the mark is
a well-known mark, are not pre-conditions for reaching that determination. Rather, the determination in
each case will depend upon the particular circumstances of that case. In some cases, all of the factors may
be relevant. In other cases, some of the factors may be relevant. In still other cases none of the factors may
be relevant, and the decision may be based on additional factors that are not listed in subparagraph (b),
above. Such additional factors may be relevant, alone, or in combination with one or more of the factors
listed in subparagraph (b), above.
(2) [Relevant Sector of the Public] (a) Relevant sectors of the public shall include, but shall not necessarily be
limited to:
(i) actual and/or potential consumers of the type of goods and/or services to which the mark applies;
(ii) persons involved in channels of distribution of the type of goods and/or services to which the mark applies;
(iii) business circles dealing with the type of goods and/or services to which the mark applies.
(b) Where a mark is determined to be well known in at least one relevant sector of the public in a Member
State, the mark shall be considered by the Member State to be a well-known mark.
(c) Where a mark is determined to be known in at least one relevant sector of the public in a Member State, the
mark may be considered by the Member State to be a well-known mark.
(d) A Member State may determine that a mark is a well-known mark, even if the mark is not well known or, if
the Member States applies subparagraph (c), known, in any relevant sector of the public of the Member State.
(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition for
determining whether a mark is a well-known mark:
(i) that the mark has been used in, or that the mark has been registered or that an application for registration of
the mark has been filed in or in respect of, the Member State;
(ii) that the mark is well known in, or that the mark has been registered or that an application for registration of
the mark has been filed in or in respect of, any jurisdiction other than the Member State; or
(iii) that the mark is well known by the public at large in the Member State.
(b) Notwithstanding subparagraph (a)(ii), a Member State may, for the purpose of applying paragraph (2)(d),
require that the mark be well known in one or more jurisdictions other than the Member State.”
185
186
Ibid
35
decisions.187 The marks authorized by these decisions are listed in the Well-Known
Trademark section of the intellectual property database. Other countries also follow one way
of recognizing the well-known aspect of a trademark through tribunal decisions.
2.8 Protection of Well-known Trademarks under the Competition and

Consumer Protection Laws
Consumers need protection for they are generally powerless; consumers are less informed,
and have less economic and bargaining power. By comparison, producers are powerful and
employ the services of sophisticated and aggressive trained marketers. 188 There is a
predictable gap of information and knowledge between consumers and business persons.
Information asymmetry and the bargaining power between the consumers and business
persons shall be balanced. Otherwise, business persons may abuse the imbalance to the
detriment of consumers and encouraged to mislead consumers, unfairly exploit the
information asymmetry, and supply fake and hazardous products to the market.189
In developed countries, consumers are protected by promoting competition for there is a high
level of faith in the benefits of well informed and stable markets to consumers. Hence, there is
a less regulatory intervention. In developing countries market, however, there is the need to
follow an interventionist approach to enhance competition and protect consumers due to the
existence of a high probability of market failure.190 But still, having developed or efficient
markets only may not necessarily be sufficient to bring consumer welfare. Hence, many
countries adopted consumer protection laws and institutions.191
Consumer protection laws refer to regulations that ensure fair interaction between producers
or service providers and consumers. Government intervention and regulation in the area of
187
Ibid
188
Gambo Ibrahim Yaro (Dr), Institutional Framework on Consumer Protection Under The Nigerian Law: A
Case Study of Consumer Protection Council, International Journal of Innovative Legal & Political Studies,
Vol. 5 No. 4 (December 2017) P. 10
189
Dessalegn Adera, The Legal and Institutional Framework for Consumer Protection in Ethiopia, LL.M
Thesis, Addis Ababa University, 2011, P. 43
190
Tessema Elias, Gaps and Challenges in the Enforcement Framework for Consumer Protection in Ethiopia,
MIZAN LAW REVIEW, Vol. 9, No.1, (September 2015) P. 83-84
191
Ibid, P. 84
36
consumer protection are justified on the basis of information asymmetry and bargaining
power imbalances between the consumers and producers/sellers. A consumer protection
framework includes promotion of competition in the marketplace, prevention of fraud,
education of customers, and elimination of unfair practices.192
In addition to the trademark regulations, well-known trademarks may be protected under the
competition and consumer protection laws. To which the best example is Japan‟s Law for the
Repression of Unfair Competition. Articles 2(1) (i) and 2(1) (ii) are effective in protecting
well-known trademarks. The first Article state that “the act of using an indication of goods,
which is identical with or similar to another person‟s indication of goods, which is widely
recognized among users, or act of transferring, delivering, displaying for the purpose of
transfer or delivery, exporting, importing goods on which such indication of goods, etc. is
used, and thereby causing one‟s goods or business to be confounded with another person‟s”193
These provisions intended to prevent acts causing confusion between goods or services of one
company with another person‟s goods or services.194
2.9 Effective Enforcement Strategies in Consumers Protection
Because of the difference in the socio-economic and political realities of the countries of the
world, there is no uniform guiding principle for the adoption and application of effective
enforcement strategies and institutional design for consumer protection applicable to all
countries across the world.195However, in the existence of the above difference in the
countries of the world, there are also some common socio-economic and political realities.
Thus, there are some common enforcement strategies which are advocated by various legal
scholars and stakeholders as effective designs for consumer protection enforcement, and are
192
Oya Pinar Ardic et‟ al, Consumer Protection Laws and Regulations in Deposit and Loan Services A Cross-
Country Analysis with a New Data Set, The World Bank: Policy Research Working Paper, January 2011, P. 2
Available at https://www.cgap.org/sites/default/files/CGAP-Consumer-Protection-Laws-and-Regulations-in-
Deposit-and-Loan-Services-Jan-2011.pdf last visited on February 04, 2020
193
Japan Unfair Competition Prevention Act (Act No.47 of 1993), Revised by Act No. 54 of 2015 (Effective
January 1, 2016)). Available at: https://www.wipo.int/edocs/lexdocs/laws/en/jp/jp204en.pdf last visited on
February 04, 2020
194
195
Tessema Elias, Supra note 190, P. 86
37
adopted by several countries in their consumer protection enforcement framework.196 Tessema
stated that “these are: (a) Following more of preventive and educative approach than punitive
and interventionist approach; (b) Setting priority to areas before intervention based on
comprehensive study; (c) Coordination and cooperation with other organs having similar
objectives; (d) Well studied, cost-effective and flexible approach to intervention; (e)
Facilitation of industrial self-regulation; and (f) Statutory guidelines for alternative dispute
resolution mechanisms (ADR).”197
To clarify some of them, the market is sensitive and does not need unnecessary intervention
unless it fails to regulate itself. Hence, the trade competition and/or consumer protection
authority needs to have guidelines that enable it to adopt less punitive and more lenient,
educative, and responsive enforcement sanction.198 As Tessema pointed that the regulatory
body needs to have access to the hierarchy of enforcement sanctions: - first: Education,
Advice, and Persuasion, second: Written warning, oral warning, Third: Administrative fine,
injunction, payment of damage, and finally: License revocation or Criminal punishment. The
first applies to the business community at large while the fourth stage shall be applied in few
cases as a remedy of last resort.199
Identifying the priorities regarding the areas of intervention is another key strategy for the
effective implementation of consumer protection. It must be based on a comprehensive study
because unnecessary interventions in the market without or with inadequate study may result
in negative effects on the consumers.200
Coordination and cooperation of the organ with a mandate of consumer protection

competition with other organs having a similar objective are vital for the proper
implementation of consumer protection by avoiding conflict of interests between regulators.201
196
Ibid, P. 87
197
Ibid
198
Ibid
199
Ibid, P. 87-88
200
Ibid, P. 88
201
Ibid
38
2.10 Protection of Trademarks in Ethiopia
Before the current trademark proclamation came in to force in 2006, disputes related to
trademark infringement were adjudicated by making use of the unfair competition laws, which
were found scattered throughout the Commercial, Civil and Criminal Codes. However, such
legal set up harmed traders, consumers, and the general public for the gap in legislation failed
to help in promoting fair trade and competition.202
Besides, there was no any law particularly applicable to the well-known trademarks, not only
to the national well-known trademarks but also there was no any law, which tries to protect
the owners and consumers of the foreign/international well-known trademarks.
To solve the gap and the problem existed in the scattered laws and, with the consideration of
the importance of trademark protection for socio-economic development; the Ethiopian
Parliament has issued the Trademark Law in 2006. And, after 7 years the EIPO issued the
Trademark Directive, in February 2013, to implement the Trademark Proclamation.
2.10.1 under Proc. No. 501/2006
Almost similar to the international trademark instruments and other jurisprudences, the
trademark proclamation, which became in to force since 2006, defined trademark as “any
visible sign capable of distinguishing goods or services of one person from those of other
persons; it may include words, designs, letters, numerals, colors or the shape of goods or their
packaging or combinations thereof.”203
According to the definition, if a sign has the capacity to distinguish products of one person
from others, it is eligible for trademark protection. Besides, it can be inferred from Art 5 of
the trademark proclamation, that a trademark is eligible for protection if it has a capacity to
identify goods or services of one person from others. Thus, there are two elements in the
stated concepts: the sign and distinctiveness.
The signs, as provided in the definition, which can be recognized as trademarks are words,
designs, letters, numerals, colors, or the shape of goods or their combinations. However, this
202
Romel Moges, Supra note 23, P. 41
203
The Trademark Proclamation, Art 2(12)
39
definition is limited only to the signs which can be physically registered in the exclusion of
smell, sound, and other physically un-visible signs from serving as a trademark.204 Signs
which are identical with or contains an armorial bearing, flag others emblem, a name or
abbreviation or initials of the name of or official sign or hallmark adopted by any state or
intergovernmental organization, or other organization created by international conventions are
not admissible for registration as a trademark.205 Besides, the signs shall not be in
contradiction with the public order or morality of the general public.206
The signs must be distinctive in the sense that, it should show that the products emanated from
a specific producer rather than a geographical origin or country. The trademark proclamation
simply states that any visible sign could be a trademark so long as that sign is capable of
distinguishing goods or services of one person from others. As it can be inferred from Art
5(1), 6(1)(c), 6(1)(e), 6(1)(f), and 6(1)(h) of the trademark proclamation, a trademark is not
admissible to registration, if it shows that the quality of the product, because this makes the
consumers believe that the signs are not intended to identify the product from whom they
emanate rather only to show the quality or quantity of the product. For instance, “testy juice”
indicates for the testiness of the juice.
Similarly, a trademark is not admissible for registration, if it is exclusively intended to show

the purpose, value, geographical indication, or the time of production of the goods or
rendering of services. These are excluded for the similar reasons stated above, for instance, a
trademark with exclusively geographical origin leads consumers to believe that this sign
shows that the geographical origin from where the product emanated rather than identifying
the source of the product from whom it emanated (the manufacturer i.e. whether the similar
products emanated from the one producer but does not mean it enables the consumers to know
identity of the person).
204
Ibid, art 6(1)(b) cum art 2(12)
205
Ibid, art 6(1)(i)
206
Ibid, art 6(1)(d)
40
2.10.2 Eligibility and Ineligibility of Trademarks for Registration
The eligibility of a trademark is directly related to the distinguishing capacity of the

trademark.207 However, eligibility does not confer entitlement for registration for there are
other necessary conditions to be satisfied under the trademark proclamation.208 The trademark
proclamation provides the conditions to be fulfilled for being eligible for registration by
listing the inadmissible grounds for registration.209 It also stated, under art 6(1)(a), that a
trademark is not admissible if it does not conform to art 5 of the trademark proclamation. Art
5 provides that the trademark which has the capacity to distinguish a product of a person from
others is eligible for registration. Art 6(1)(c) also provides that a trademark that has not a
capacity to distinguish is not admissible for registration.
The trademark proclamation provides the same grounds for denying registration as like as the
Paris convention.210 The latter denied registration of a trademark on two general grounds:
One, if the trademark has not a distinctive character; second, if “they are contrary to morality
or public order, in particular, of such a nature as to deceive the public.”211 The grounds
provided under art 6 could also be justified on the same grounds, either on lack of
distinguishing functions, on reasons of morality or public order, or protection of consumers
from being misled.212
The issue of morality or public order should be seen from the point of the signs, not the
products or services213, as it is prohibited under the TRIPS agreement.214
Trademark features are eligible for registration if it fulfills two requirements: distinctiveness
and non-functional215, in addition to the requirements provided under the trademark definition,
which requires the signs to be visible and physically able to draw in a document. Features may
be included in a product or packaging design to make the product more effective, to make it
207
Ibid, art 5(1) and art 6(1)(c)
208
Fikremarkos Merso, Supra note 1, P. 176
209
The Trademark proclamation, Art 6
210
211
The Paris Convention, Art 6quinquies
212
213
Ibid
214
215
Fikremarkos Merso, Supra note 1, P. 163, note that non-functional mean that the sign must not show one or
more the function of the product.
41
easier to use, display or ship, or to make it cheaper to manufacture. Such features may also
just be for decoration or ornamental purposes i.e. aesthetic functionality. Consumers buy
jewelry, clothes, dolls, toys, holiday goods, etc. because they appreciate and like the
appearance or design rather than their being necessarily effective. In both of these cases,
consumers may buy the products or services because of the special functions of the features or
because they appreciate the beauty or attractiveness of the design. 216 Generally, for a
trademark to be protected it should not be related to the functions of the goods or services, in
which the sign is attached.217
Distinctiveness means the trademark ability/capacity in enabling consumers to identify the

goods or services and the source of them. “A sign is distinctive when the consumers of that
product or services recognize it as identifying the goods or services in question from a
particular.”218 Distinctiveness is the heart of trademark since the main purpose/aim of a
trademark is assisting consumers in identifying goods and /or services. 219It also shows the
relationship between the sign/mark and the product in which the sign is attached. Some of the
marks could be inherently distinctive while others become to it through time. Marks those
which did not show any information other than indicating its source are inherently distinctive.
Some other Marks those which have information about the product may become distinctive
through time.220
Fanciful, arbitrary, and suggestive marks are considered as inherently distinctive Marks.221
“Fanciful Marks”, which consists of coined words, does not have any information related to
the product. Kodak refrigerator is the best example (the word Kodak does not exist before in
any language). Thus, they are considered as distinctive ab-initio or inherently. Arbitrary
marks are the ordinary language with no connection with the goods or services that the marks
are attached to. Apple computer is the best example. Suggestive marks are also that which
does not have a direct connection with the products but indirectly suggests some information.
216
Ibid
217
See Art 6(1)(g) of the Trademark Proclamation, a trademark consisting exclusively of a shape which results
from the nature of the good itself or that is necessary to obtain a technical result of the good or that gives
substantial value to the good is not eligible for registration.
218
219
Ibid
220
Ibid, P. 179
221
Ibid
42
Marks those which have some information related to the product or services on which the
marks are attached may become distinctive through time i.e. attaining secondary meaning.222
A trademark, though it was not distinctive initially, may get distinctiveness through use over a
long period of time. It is at the time when the consumers consider the mark/ sign as it has
mere distinguishing function i.e. the consumers consider all products with that mark/sign are
produced by one producer or at least at his knowledge. The same concepts are also provided
under the TRIPS agreement223 that distinctiveness could be established through use.
Besides, to the above general conditions, marks shall not be registered if they have general
terms, descriptive terms, geographical terms, and personal names.224
General terms are those common words or terms to the particular product. They cannot
identify the particular source of the product. Thus, such kind of mark cannot have
distinctiveness and thereby excluded from serving as a trademark.
Descriptive signs are also those signs which expressed the goods or services, or some
attributes of the products or services. They are not specifically related to the particular
producer. They are related to the functions of the products which is inadmissible for
registration.225Consumers do not consider the marks it is indicating a particular producer
rather as it is simply expressing the components or attributes of the products.
Geographical terms are also words which are the name of the places, which may show the
place where the activity takes place or where the business is located. This is not admissible for
registration226 because the consumers consider it as it is not indicating a particular source of
the goods or services but rather merely as information that describes where the products come
from.
Personal names could also be used as a mark, but if they are surname or family name it is not
admissible for registration227 unless it attains a secondary meaning. Because granting a
222
Ibid, P. 185
223
See Art 15(1) of the TRIPS Agreement
224
See Fikremarkos Merso, Supra note 1, P. 180- 184
225
The Trademark Proclamation, Art 6(1)(g)
226
Ibid, Art 6(1)(e)&(h)
227
Ibid, Art 6(1)(j)
43
trademark for a person may cause hardship or unnecessary conflict with others with the same
name.228
2.10.3 The Rationales/ Functions of the Trademark Protection
According to Fikremarkos229, some traders wish to control the market either through the
quality or attracting features of the product and others also want to use the marks of others
(particularly, the first) with a good name. Besides, consumers should be able to purchase their
preferences or choices in which they think it possesses good quality or important/ attractive
features and there is a need to ensure the consumers are not misled in buying goods or
services out of their preference/choice. Thus, trademark protection has the rationale of striking
balance between the interests of traders and consumers, ensuring fair competition and
avoiding or at least minimizing consumer confusion.
Though there is no specific provision which deals with, the rationales or functions of
trademark protection can be inferred from the preamble of the trademark proclamation, the
definition of a trademark, eligibility for trademark registration provisions, and other related
articles of the proclamation.
To start from the preamble of the proclamation230, the rationales of the trademark protection
which was the reason to proclaim the legislation was:
“For it is necessary to protect the reputation and goodwill of business persons

engaged in manufacturing and distribution of goods as well as rendering services
by protecting trademarks;
For it is necessary to avoid confusion between similar goods and services;
For trademarks, in the course of free trade, play an important role in guiding
customers‟ choice and protecting their interests.”
The trademark proclamation has the purpose of protecting the product manufacturers‟ and
distributors‟ or service providers‟ goodwill and reputation to enable them to sustain their
228
Fikremarkos Merso, Supra note 1, P. 183-184
229
Ibid, P. 165- 166
230
See The Trademark Proclamation, 1st and 2nd Para of the Preamble
44
quality and/or attractive features of their products or their services. The proclamation has also
based its purpose of avoiding the confusion of consumers between similar goods or similar
services. Besides, the proclamation has the purpose of protecting the interest of consumers by
guiding the consumers‟ choice and protecting them from confusion.
The trademark proclamation, as indicated under its preamble, has the purpose of avoiding the
confusion between similar goods and services for the function of protecting the reputation and
goodwill of business persons engaged not only in manufacturing but also in the distribution of
goods and rendering services. Besides, it has the purpose of guiding customers‟ choice and
protecting their interests, since; it is believed that the protection of trademarks ensures fair
competition which is vital in the free trade system and in ensuring the interest of consumers.
Thereby, it would have a positive impact on national economic advancement and especially
on the trade and industrial development of the country.
The Proclamation does not expressly state the function of trademark registration as an
incentive for the production of quality products. However, by emphasizing the source-
identifying role of trademark registration, it can be contended that the Trademark
Proclamation encourages the production of quality products.231
Trademark is defined as any visible sign capable of distinguishing goods or services of one
person from others.232 As it can be inferred from the definition, the trademark has the rationale
of achieving the distinguishing function. Thus, this provision makes clear that so long as a
sign fulfills the minimum requirement of distinctiveness, it shall be protected and thereby,
assuring the source identification functions of the trademark.233
According to Fikremarkos, the distinctiveness requirements under Art 2(12), Art 5(1), and Art
6(1)(c) of the trademark proclamation shows that the main function of trademark protection is
identifying the source of the product with the basic aim of protecting the consumers from
confusion by assisting them to identify the source of the product.234
231
Tilahun Esmael, Supra note 9, P, 102
232
233
234
45
According to Romel, in respect of the trademark proclamation, one can conclude that the law
has guaranteed other functions of trademark besides to the distinguishing function. “First,
through explicitly requiring the trademark owner to control the quality of a product/service
within a license agreement, it is offering recognition for the quality guarantee function of a
trademark. Second, through the work of Article 26 (2), the proclamation rather than restricting
the protection of trademarks in respect of avoiding source confusion (the first limb of Article
26(2) a), it has opted for protection in view of guaranteeing quality (the second limb of Article
26(2) a and 26(2) b) and arguably also in respect of its advertising function (Article 26(2)
c).”235
2.10.4 Scope of the Trademark Protection
Under the trademark proclamation, trademark protection, which will have a binding effect on
the third parties, becomes viable if a person is granted the certificate, which shows the
registration of the particular trademark.236 Thus, trademark protection cannot be granted by
use, unless it fulfills the requirements of a well-known trademark under art 23.237
The trademark proclamation‟s protection is equally applicable to both nationals and

foreigners. However, the foreigners are additionally required to fulfill the condition provided
under Art 3, which states that the foreigners are equally protected as like as nationals if they
are eligible for protection based on the principle of reciprocity or in accordance with any
treaty that Ethiopia is a party.
235
236
237
It is discussed in detail in the next section
46
CHAPTER THREE
WELL-KNOW TRADEMARKS PROTECTION IN ETHIOPIA
3.1 Well-known Trademark Protection
As has been described in detail in the above sections, the trademark protection has application
limited to a particular territory under both the international instruments and different national
laws. The concept of territoriality infers that the protection could only be granted upon
registration of each trademark on a particular country where protection is required. 238
However, with the expansion of advertisements through the internet, TV, and other social
media mechanisms, some trademarks become well-known both nationally and internationally,
not only in the places where the products are available but also in those where the products are
not available. Thus, as an exception to the general principle of territoriality, well-known
trademarks become necessary to be protected without registration. Contrary to the
Territoriality Rule, proof of registration is unnecessary to take infringement action involving a
well-known mark, and thus reputation should be considered sufficient to create enforceable
rights in a foreign well-known foreign.239
The term well-known trademark is mainly found in Art 23 of the trademark proclamation, in
addition to Art 7(2) and 26(4) of the trademark proclamation. However, like the other
international instruments mainly the TRIPS Agreement and the Paris Convention, the term
well-known trademark is not defined under the trademark proclamation. Besides, the
protections granted to well-known trademarks are still grey areas, both internationally and
under the Trademark Proclamation. Thus, despite general recognition that protection should
be given to well-known marks, the Trademark Proclamation has limitation in fully addressing
vital questions that could arise in related with.240
238
239
Ibid, P. 114
240
Ibid, P. 91
47
As provided under the trademark proclamation, foreign well-known trademarks could get
protection if they are well-known in Ethiopia.241 Considering the great number of Ethiopian
diaspora abroad, internet, the growth of international satellite TV, the ease of global
communications, and the convenience of international travel, one can safely say that, foreign
marks can and do easily become well-known to Ethiopian consumers even without actual use
in the country. Thus it is with this understanding that the Trademark Proclamation provided
for rules which protect property interests of foreign well-known trademarks owners.242
However, the Proclamation does not start to protect the foreign well-known marks at the date
of its adoption. Rather its application is subject to any international agreement or conventions
that Ethiopia will enter in the future. The most important international agreements in this
regard are the Paris Convention and the TRIPs Agreement. However, Ethiopia is not a party to
these international instruments until now. Thus, the pertinent provision of the Proclamation
protecting well-known trademarks will be put in to effect only when Ethiopia joins these
instruments and by then the well-known trademark owners will enable to exploit and use their
rights. 243
Under the trademark proclamation, for a mark to be considered as a well-known mark, it is

sufficient if the mark is well known in at least one relevant sector of the public and the mark
doesn‟t need to be well-known by the public at large.244The reason behind this is that marks
are mostly used in goods or services which are directed to certain sectors of the public such as
in group of income, age, sex or other market segment identification mechanisms.245
As Art 6bis of the Paris Convention provides protection is granted if the mark is well-known
“…in the country in which protection is sought”, the Trademark Proclamation has also
provided protection for marks that are only well-known in Ethiopia.246Thus, to be granted
protection under the Trademark Proclamation, a trademark must be well known in Ethiopia.
The Proclamation, in the same manner to Art 16 of the TRIPs Agreement, protects well-
241
242
243
Ibid
244
245
246
48
247
known trademarks created as a result of the promotion of the trademark and the knowledge
gained as a result of promotions by the adding the statement “including knowledge which has
been obtained as a result of the promotion of the trademark”248
Besides, traditionally trademark protection was only applicable where goods were of the same
description. There was no remedy if a mark is used for different categories of goods. New
developments of trademark law provide protection not only in similar or identical goods but
also in a different category of trademarks. Similarly, the trademark proclamation provides that
an owner of a well-known trademark can protect his mark against any infringements coming
from similar/identical goods and different category of goods.249
The proclamation provides that registrar may consider whether an application for registration
will have a negative effect on the reputation or distinctive character of a well-known mark,
even if the application registration is for goods or services not similar or identical.250 Besides,
as provided under Art 26(4) of the trademark proclamation, the likelihood of confusion shall
be presumed in the case of any person‟s unlawful use of the well-known trademark. Thus, the
term any person indicates that the trademark owner is able to prevent the unauthorized use of
his trademark in relation to goods or services which are not similar to the well-known
trademark owner‟s goods or services.251 Further, Art 6bis of the Paris Convention provides
marks that are well-known in a member country may be protected though they are not
accessible in their borders.252 The same also provided under the Art 23 trademark
proclamation.
3.2 Rationale for Well-known Trademark Protection
As of source identification function, a trademark enables consumers to identify the real source
of the product, and thereby this makes the producers sustain their goodwill by ensuring their
quality. This also assists the consumers in identifying the products which reduce the search
247
Ibid, Art 23(2)
248
249
The Trademark Proclamation, Art 7(2) cum 26
250
Ibid, Art 7(2)
251
252
Ibid, P. 114-115
49
cost and confusion. Besides they will become beneficiary of the fair competition for the
traders try to ensure their quality and/ or to adjust their pricing. As it has been tried to discuss
in detail in the section which deal the rationales for protection of well-known trademarks
under international experience, the well-known trademarks are more susceptible to
infringement because they are more recognized by the consumers not only in the place where
the products are available but also in the places where the products are not available. Thus, it
needs special protection than the other trademarks.
Consumers who would not purchase the copying mark owner‟s products will do so because
they believe the copier‟s products are associated with the products bearing the well-known
mark that they have read about in magazines or travel guidebooks, or seen in advertisements,
on their favorite websites, or television programs.253
One main rationale of the trademark protection, as it can be understood from the preamble of
Proclamation, is an avoidance of consumers‟ confusion. Consumers who are aware of a well-
known mark overseas or through advertisement will erroneously assume the copycat as the
original and will pay for a goods/service which they would not otherwise be willing to buy.
The acts of copyists manipulating such trademark have resulted that neither they nor others
can establish a competitive and quality undertaking under the same trademark. This will affect
also the overall rationale articulated under the preamble of the trademark proclamation i.e. the
overall economic trade and industrial development of the country.254
3.3 Scope of Well-known Trademark Protection: Registered and

Unregistered Trademarks
The TRIPS Agreement and the legislations of a number of countries provide protection for the
unregistered and registered well-known trademarks. The provision of Art 16(3) of the TRIPS
agreement as substantive minima is not an obstacle to provide the same type of protection for
unregistered well-known trademarks as well. Thus, a number of Member States have already
provided a possibility to protect unregistered well-known trademarks beyond the principle of
253
Ibid, P. 112
254
50
specialty under the same or similar conditions as the registered well-known trademarks.255
Unregistered well-known trademarks can be protected with respect to identical and (or)
similar goods and services if there is a likelihood of confusion. The second level of protection
is the legal protection of registered trademarks with a reputation beyond the principle of
specialty.256
Generally, the TRIPS Agreement and legislation of many countries provide that unregistered
well-known trademarks could be protected from an infringement of similar or identical goods/
services.257 Whereas, the registered well-known trademarks may be protected, provided that it
has been included in the legislation of the particular countries, from infringement not only
from similar or identical marks but also from dissimilar marks.258
Art 7(2) implies that a national/foreign well-known trademark is protected in respect of

similar or identical goods regardless of their registration. As per this provision, the national or
foreign well-known trademarks are checked whether they are registered or not in the
examination phase of other trademarks. However, the owner of the foreign well-known
trademark, to have right of intervention in the examination phase, should have to fulfill the
requirement of Art 23. Thus, this provision does not create a right to claim/to take action over
the infringers based on Art 26.
Art 26(2) & (4) puts the requirements of the registration for a trademark owner, including the
well-known trademark owner, to enjoy the exclusive rights listed under sub art 2, as it can be
validly inferred from the wording of the provision “Registration of a trademark shall confer
upon its owner the right to…” Thus, it can be validly concluded that national well-known
trademark owners are protected regardless of their trademarks‟ registration in respect of
similar/ identical goods or services during the examination phase. 259 However, to be protected
from infringement of unrelated/ dissimilar goods, the well-known trademarks should have to
be registered as a precondition.260 Besides, registration of the well-known trademark is also
255
Danguolė Klimkevičiūtė, Supra note 153, P. 232
256
Ibid
257
Ibid, P. 233
258
Ibid
259
The Trademark Protection, Art 7(2)
260
Ibid, Art 7(3)
51
required to have the trademark owner the right to take action.261Thus, the proclamation
protects the national unregistered well-known trademarks only at the examination stage.262
3.4 Protection of National and Foreign Well-known Trademarks
Article 7(2) of the proclamation provides that the registration has to be denied for a trademark
when it is identical with or confusingly similar to, or contains a translation of a trademark,
that is well known or established by use in Ethiopia for identical or similar goods or services
of another person. The wording of the provision simply includes the word “...well known or
established by use in Ethiopia…” without clearly emphasizing on its‟ application on the
regulation of the national or foreign well-known trademarks in the registration phase..
Both the foreign well-known trademarks and the national well-known trademarks are
protected263 in the examination phase264by the trademark proclamation under art 7(2) which
provides that a trademark shall not be registered if it is identical with or confusingly similar to
or contains a translation of a well-known trademark for identical or similar goods or services
of another person. Those trademarks are protected in the examination phase for similar or
identical goods and/or services only and it does not protect from dissimilar goods or services
so long as the well-known trademarks are not registered.265 However, if the well-known
trademarks are registered, they will get protection in the examination phase to exclude
identical or confusingly similar trademarks of similar or identical goods or services.
Article 23(1) also provides that a well-known trademark, which is entitled to protection under
an international convention to which Ethiopia is a party, shall be protected under the
trademark proclamation if it is well known in Ethiopia and the owner of the trademark is a
261
Ibid, Art 26(2)
262
263
Interview with Ato Gebretsadik Tesfay, Director of Intellectual Property office of the Science and
Technology bureau of Tigray Region, on 29 May 2020
264
It should be noted that the examination phase is to mean that the phase in which the trademark examination
and registration office tries to see whether the application of a trademark for registration fulfills the
requirements of a sign and distinctiveness under the trademark proclamation, which includes investigating
whether the trademark is identical with the existing registered trademarks and/or, registered and unregistered
well-known trademark owners in accordance with Art 11 of the Trademark Proclamation.
265
See the Trademark Proclamation, Art 7(3)
52
national of a state party to the convention or domiciled in or has a real and effective industrial
or commercial establishment in a state party to the convention.
The trademark proclamation lists the exclusive rights of a registered trademark owner through
Art 26. To Romel, Article 7(2) and Article 26(4) of the trademark proclamation are concerned
with the protection of national well-known trademarks while art 23(1) of the trademark
proclamation provides the requirements for the protection of well-known trademarks which
are specifically related to the foreign well-known trademarks to the exclusion of national well-
known trademarks because the provision required for the protection that the trademark owner
shall be the national or domiciliary or has a real and effective industrial establishment in a
state party to the convention which cannot be a requirement for the protection of national
well-known trademarks.266
The proclamation has covered the national well-known trademarks by Art 7(2), 7(3), and
26(2) & (4). Art 7(2) protects the well-known trademarks by denying registration of a similar,
identical, or a translation of a mark that is well-known or established by use in Ethiopia
regardless of the registration of a well-known trademark. The provision protects unregistered
well-known marks and marks which are established by use in Ethiopia. The latter types of
marks may be of foreign or national marks which are established by use in Ethiopia.
However, the owners of unregistered national well-known marks and owners of unregistered
marks which are established by use in Ethiopia are not entitled to the exclusive rights under
article 26. It is only upon registration of the trademark that the well-known trademark owner
enjoys the exclusive rights not only in similar, identical, or translations but in dissimilar goods
too.267 The trademark proclamation endows exclusive rights to registered trademarks only.
The unregistered well-known marks as well as unregistered marks established by use in
Ethiopia are protected during the examination phase.
To Romel, the protection of unregistered national well-known trademarks and marks which
are established by use in Ethiopia under Art 7(2) is to protect consumers from confusion than
266
267
The Trademark Proclamation, Art 26(4)(2) & Art 7(3)
53
protecting the interest of the mark owners, whereas the protection under article 26 is more of
importance for trademark owners.268
Art 7(2) of the trademark proclamation offers protection indirectly to unregistered foreign
well-known marks. However, there is a clear doubt on its practical applicability for the
registrar may not be that much watchful enough to have the knowledge to preclude an
application for the registration of those marks. Unfortunately, there is no consumer
association that cautiously and actively opposes an application for the registration of
unregistered foreign/international marks, those which could be taken in to account in the
examination phase.269 Besides, there is no institution in Ethiopia mandated with opposing an
application for registration identical or similar to the foreign well-known trademarks with the
purpose of protecting consumers.
3.5 Determination of Well-known Marks
The same to the TRIPS Agreement,270Art 23 of the trademark proclamation provides that the
knowledge in the relevant sector of the public should be taken in to account even though the
owner of the mark fails to have an established business or goodwill in Ethiopia. In relation to
the protection of well-known trademark, the practice in the EIPO is that the officer, who is in
charge of examination and registration of trademarks, reject the applications for the
registration of a mark which is well-known or established by use in respect of the same goods/
services. The practice of the EIPO does not deny the registration of marks if it is used with
different goods/ services even though it is detrimental to the interest of the owner of the well-
known trademark.271In determining the well-known aspect of a mark, the practice of the EIPO
is looking at the WIPO website and the annual sales revenue of goods/ services transacted
with such marks.272
The WIPO joint recommendation and the practice of other countries considered two points in
determining the well-known aspect of a mark: determining the factors relevant to establish the
268
269
Ibid, P. 48
270
271
272
Ibid, P. 63
54
extent and the level of knowledge of the mark, and determining the factors to establish the
relevant sector of the public.273
1) Factors Used to Establish Well-known Aspect of Marks

The TRIPS Agreement provides, in establishing the well-known aspect of a mark, that” the
knowledge of the relevant sector of the public” should be taken in to account including the
knowledge obtained through promotion.274 However, the Agreement is silent from providing a
guideline in determining the well-known aspect of a trademark.275
The WIPO joint recommendation lists some positive and negative factors that can be used to
determine a mark as a well-known.276 Each of those listed factors is neither exclusive nor
cumulative requirements to establish the well-known aspect of a mark and the mandated
authorities are required to decide on a case by case basis.277
However, the Ethiopian well-known trademark regulation system fails to provide the
guideline on how to establish the well-known aspect of a trademark.278 Thus, as Romel
recommends, basing in international agreements and experience of other countries, the
following factors are required to be included to determine the well-known aspect of a
trademark; First, the factors that are used to determine the knowledge of a mark, which should
be framed in a way that reveals the quality aspect of the trademark. Second, the quantitative
aspect of the requisite level of knowledge of the trademark in the relevant sector of the public
should be determined. Finally, a form of discretionary power needs to be allowed for the
273
Ibid
274
275
276
See the WIPO, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, Art
2(1)(b), which reads as “In particular, the competent authority shall consider information submitted to it with
respect to factors from which it may be inferred that the mark is, or is not, well known, including, but not
limited to, information concerning the following: 1. the degree of knowledge or recognition of the mark in the
relevant sector of the public; 2. the duration, extent and geographical area of any use of the mark; 3. the
duration, extent and geographical area of any promotion of the mark, including advertising or publicity and
the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; 4. the duration
and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent
that they reflect use or recognition of the mark; 5. the record of successful enforcement of rights in the mark,
in particular, the extent to which the mark was recognized as well known by competent authorities; 6. the
value associated with the mark.”
277
Ibid, see also Art 2(1)(c)
278
Ato Gebretsadik Tesfay, Supra note 263
55
organ mandated to determine the well-known aspect of a mark which enables it to consider
the bad faith of the other party.279
2) Factors Used to Determine the Relevant Sector of the Public

The WIPO recommendation provides a guideline that could be used to determine the relevant
sector of the public. It stated that the relevant sector of the public includes that, but not
necessarily limited to, the actual/ potential consumers of the type of the goods or acts of
services to which the trademark applies, persons involved in the channels of distribution of the
types of goods and/ or acts of services to which the mark applies and business circles dealing
with the type of goods or services to which the mark applies.280
The commentary to the WIPO Joint Recommendation provides guidelines that the member
States should take into account in setting "the relevant sector of the public". First, the subject
that should be taken into account is the relevant sector of the public than the public sector in
general. Second, factors such as the target group for the goods /acts of services in relation to
which the mark is used or group of actual/potential purchasers as a parameter to identify the
actual and/ potential consumers could be taken as a basis to determine the relevant sector of
the public. Marks are often used in relation to goods or acts of services that are directed to
certain sectors of the public such as, for example, customers belonging to a certain group of
income, age, or sex.281 Third, the channels of distribution of the particular goods/acts of
services should be taken into account for effect the process of setting the relevant sector of the
public. Fourth, it also recommends for consideration should be given to what business circles
would mean and it as such includes all those who deal with the goods and/or services to which
a mark applies in general and they are constituted of importers, wholesalers, licensees or
franchisees interested and prepared to deal in the goods or services to which the mark
279
280
Ibid, P. 69
281
Ibid, “Citing” WIPO, The Enforcement of Intellectual Property Rights: a Case Book, 149,150
(3rdedition,2012) available at
https://www.google.com.et/search?q=WIPO%2C+The+Enforcement+of+Intellectual+Property+Rights%3A+
a+C
ase+Book%2C+149%2C150+3rdedition%2C2012&oq=WIPO%2C+The+Enforcement+of+Intellectual+Prop
erty
+Rights%3A+a+Case+Book%2C+149%2C150+3rdedition%2C2012&gs_l=psyab.12...2745.25607.0.28183.2
33.3 8.0.0.0.0.728.3709.3-4j1j2j1.8.0....0...1.1j2.64.psy-ab..228.1.508...33i21k1.VYAz_8ZH0t4 p. 143,145”
56
applies.282 These factors could be adopted in Ethiopia to solve the problem of giving effect the
requirement of “…knowledge of the trademark in the relevant sector of the public…” which is
enshrined under Article 23(1) of Proclamation No. 501/2006.283
3.6 The Exclusive Rights of the Well-known Trademark Owner
The TRIPS Agreement provides the exclusive right to use and the right to exclude all other
third parties not having the owner‟s authorization from using in the course of trade 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.284
Similarly, the trademark proclamation stipulated that the trademark owner has the right to use
the trademark, with the precondition of the trademark being registered, and has the right to
give consent for others to use the trademark.285
Besides, the TRIPS Agreement provides the presumption of law in the case of the use of an
identical sign for identical goods or services, a likelihood of confusion is presumed. 286 The
trademark proclamation provides the same concept in Art 26(3). The proclamation also
includes the application of the presumption of law to the well-known trademarks, in the case
of any action instituted by the owner of a well-known trademark against any person in respect
of the unlawful use of the well-known trademarks.287
Under Sub-art 2 of Art 26 of the trademark proclamation, in a similar way as TRIPS

Agreement provided, the trademark owner has also the right to exclude others from using the
trademark itself or from using a resembling trademark in a way as to be likely to mislead the
public.288 This has mainly aimed at avoiding consumer confusion. This purpose could be also
realized in the examination phase, by enabling the trademark owner to raise an opposition for
a similar or identical trademark based on Art 7 of the trademark proclamation. Not only the
282
See WIPO, The explanatory note of the joint recommendation (Sept. 1999), Para. 2. 11, 2. 18, Available at:
https://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf last visited on: March 2, 2020
283
284
The TRIPS Agreement, Art 16(1), First Sentence
285
286
The TRIPS Agreement, Art 16(1), Second Sentence
287
288
Ibid, Art 26(2)(a)
57
rights which are provided under Art 26(2), any other actions which are detrimental to the
rights of the registered trademark owner are also prohibited by the trademark proclamation
through granting the trademark owner the right to exclude others.289
289
Ibid, Art 26(2)(b)&(c)
58
CHAPTER FOUR
FOREIGN WELL-KNOWN TRADEMARKS PROTECTION IN

ETHIOPIA: FROM CONSUMERS’ PROTECTION
PERSPECTIVE
4.1 Introduction
Well-known trademarks were not particularly governed in the Ethiopian laws/legislations

before the coming in to force of the Trademark Proclamation No. 501/2006. The trademark
proclamation tries to cover the concept mainly through Art 7 and 23. The first article tries to
protect both the domestic and foreign well-known trademark in the examination phase i.e.
during the registration time.
Art 23 also provides protection to the foreign well-known trademarks as it can be inferred
from the “requirement wording” of the provision. The article provides that well-known
trademarks are protected, if they are entitled to protection under an international convention to
which Ethiopia is a party, in addition to the requirement of being well known of the trademark
in Ethiopia. This requirement clearly shows that the provision applies only to the
international/foreign well-known trademarks.
Though the trademark proclamation provided provisions which tries to protect the foreign
well-known trademarks, their sufficiency in protecting consumers from confusion by fake-
foreign well-known trademark is in question and there is a practical confusion of consumers
by fake-foreign well-known trademarks in the market. To see it from several perspectives, it is
necessary to explore related laws of the country other than the Trademark Proclamation. Thus,
the first section will explore the sufficiency of the legal framework of Ethiopia in protecting
consumers from confusion. The next section will deal with institutional framework and its
sufficiency in protecting consumers from confusion. And thereby will be tried to show up the
existing practical problem in the market, which traces from the gap of the legal and
institutional framework in protecting consumers from confusion.
59
4.2 The Legal Framework of Consumers’ Protection from Confusion by
Fake-Foreign Well-known Trademarks in Ethiopia
4.2.1. Under the Trademark Proclamation
Historically, the primary purpose of protecting trademarks is given to the function of origin
indication. This underlined that it gives the information to the potential buyers that all the
goods bearing a certain trademark come from the same source (the identity of the origin of the
goods).290
One of the core rationales of trademark protection is the elimination of or at least reducing,
consumers‟ confusion thereby the other benefits of trademarks will trace from. For instance,
the positive advantages of the goodwill of a particular well-known trademark can be ensured
only if the trademarks are not in confusion with other trademarks in the practice, i.e. if there is
no confusion on consumers. If the confusion of consumers is eliminated, the producers of the
particular trademark enable to ensure consistent quality of its products which bears the mark.
Taking the above reason into consideration, as it has been discussed in detail in the last
chapter; the Trademark Proclamation has also taken that ensuring the interest of consumers as
one of the main rationales for protection of trademarks.291 It provided protection for a
trademark in a way that could enable the consumers to distinguish the goods or services of
one person from those of others, which will have an effect on protecting the consumers from
confusion.
In addition to the preamble of the proclamation, the definition part also includes that, a
trademark is any sign which has a capacity to distinguish the goods and/or services of one
person from others.292 With the same purpose Art 5(1) and Art 6(c) of the trademark
proclamation provides that, a sign which is incapable of distinguishing the goods or services
may not be admitted. As it has been tried to discuss in the previous chapters, the
distinguishing function of trademark refers to the capacity of the mark/sign in enabling
290
Aleksandra Nowak-Gruca, Supra note 64
291
The Trademark Proclamation, Preamble, Para 2
292
Ibid, Art 2(12)
60
consumers to identify the goods or services of one person from others, which has a significant
role in protecting the interest of consumers.
The rationales mentioned above has been also reinforced by Art 7(1) of the Trademark
Proclamation, which provides that, trademarks should not be registered if they likely deceive
or cause confusion on the consumers. This and the above-mentioned provisions have the
purpose of ensuring the interest of the consumers by enabling them to purchase the goods or
services they choose/ intended.
In support of the above statement, the Director of the Intellectual Property Unit Office of the
Tigray Region noted that the trademark proclamation has the purpose of ensuring the
consumers‟ choice and interest. Thus, it has the role of enabling consumers to easily identify
their choice and purchase what they want.293 He added that the protection of foreign well-
known trademark has a similar purpose of protecting the interest of consumers, not to be
confused by fake foreign well-known trademarks.
However, concerning the well-known trademarks, the Trademark Proclamation provides the
protection haphazardly, without considering different interests i.e. including the interests of
the consumers. Art 7(2) of the Trademark Proclamation provides that well-known trademarks
are protected from identical or confusingly similar marks of the identical or similar goods
or/and services in the examination phase, irrespective of registration of the well-known
trademarks. This provision, however, does not grant the well-known trademark owners, the
right to exclude identical or confusingly similar marks use or to oppose the registration of the
same. Rather, it is only in the duty of the registrar to exclude the marks which are identical or
confusingly similar to the well-known marks.
The question that could be posed here is; what if the registrar fails to dismiss the application
of identical or confusingly similar marks to the well-known trademarks? Can the unregistered
well-known trademark owner apply to dismiss the application or to exclude the use of the
mark? As it could be clearly inferred from the Art 26 of Trademark Proclamation, it is only
the registered trademark owner who has the right to exclude others from “any use of a
trademark or a sign resembling it in such a way as to be likely to mislead the public for goods
293
61
or services in respect of which the trademark is registered, or for other goods or services in
connection with which the use of the mark or sign is likely to mislead the public.”
Registration is a pre-condition to enjoy the exclusive rights enshrined under the provision.
Thus, the unregistered well-known trademark owners can‟t claim or apply for excluding the
identical or confusingly similar marks.
Art 23 protects the foreign well-known trademarks with mandatory pre-conditions for
protection in which the trademark will not be granted protection if it fails to fulfill the
requirements. The foreign well-known trademarks could be granted only if it fulfills;
First, the foreign well-known trademark should be a mark entitled to protection to an

international agreement or convention to which Ethiopia is a party. The trademark to get
protection under the international convention must be established or carry on business in the
member state or the owner of the trademark must be a national, residence, or domicile of a
member state which depends on the wording of the instruments. Thus, according to the
Trademark Proclamation, well-known trademarks are protected if they are capable to be
protected in the international convention according to the respective international convention.
The prominent international instruments are the TRIPS Agreement and the Paris Convention.
However, Ethiopia is not a party to those international conventions/ instruments294, though it
is trying to join the World Trade Organization (hereinafter the WTO)295 for the last two
decades. Hence, foreign well-known trademarks could not validly get protection in Ethiopia
so long as it does not join those prominent, global, and widely signed international
instruments unless otherwise provided under a respective bilateral treaties or BITs.
294
World Intellectual Property Organization (WIPO), WIPO-Administered Treaties: Paris Convention Total
Contracting Parties, https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=2 last visited
March 11, 2020
See also the World Trade Organization, members and observers
https://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm, It should be noted that a party to the WTO
are simultaneously a party to the TRIPS Agreement.
295
It should be noted that the World Trade Organization (WTO) is an intergovernmental organization that is
concerned with the regulation of international trade between nations. The WTO officially commenced on 1
January 1995 under the Marrakesh Agreement, signed by 123 nations on 15 April 1994, replacing the General
Agreement on Tariffs and Trade (GATT), which commenced in 1948.
It includes different multi-lateral agreements including the General Agreements on Trade and Tariffs (GATT),
General Agreement on Trade in Services (GATS), the TRIPS Agreement and others.
62
Second, the foreign well-known trademark is protected if it is a trademark of a person who is
national of a state party to the convention or, who is domiciled in or has a real and effective
industrial or commercial establishment in a state party to the convention. Here, the well-
known trademark holder, though her/his trademark is entitled to protection for the owner has a
residence or other criteria which are out of the stated requirements under the provision, will
not be protected if s/he does not fulfill one of the stated requirements such as being national to
or domiciled in a member state of the convention, or has a real and effective industrial/
commercial establishment in a member state to the convention. An official of the EIPO stated
that:
“We protect unregistered marks, but to benefit out of such protection, the owners
shall show us that their trademark is well-known and that they are established by
use in Ethiopia. This would mean that the protection of such marks necessarily
requires the existence of having established business in Ethiopia.”296
Products produced abroad will not get protection so long as they don‟t fulfill the requirements
of “having established business in Ethiopia.” Thus, foreign well-known trademarks can‟t get
protection if they are not registered and have not established business in Ethiopia, even though
other products produced with the identical or confusingly similar marks are creating confusion
in the market.
Third, the foreign well-known trademark protection is also protected if it is well known in
Ethiopia too. The trademark should be recognized as a well-known trademark in the
international convention to which Ethiopia is a party. Besides, it must be well-known in
Ethiopia. The well-known aspect of the trademark is determined by giving due regard to the
knowledge of the trademark in the relevant sector of the public, including knowledge that has
been obtained as a result of the promotion of the trademark.297
The well-known trademarks get protection even in the countries where their products are not
available if they are well-known in the countries through promotion/ advertisement, which has
296
Romel Moges, Supra note 23, P. 111-112 “Citing” interview with Ato Feleke Bireda, Trademarks
Identification, search and examination expert, EIPO (Dec. 19, 2017)
297
63
the main purpose of protecting the consumers in ensuring their interest and for future
investment of the trademark holders in the countries.298
Taking all the requirements, the trademark protection gives concern to the interest of
manufacturers and international obligations and, it disregards the interest of consumers.
Though trademark is entitled to protection as a trademark under the international convention,
it may not be a well-known trademark under the convention. However, what is required under
the trademark proclamation is the entitlement of protection under the international convention
not only as a trademark rather as a well-known trademark in addition to the requirement of the
establishment of the trademark‟s well-known aspect in Ethiopia. Thus, a particular foreign
trademark that is well-known in Ethiopia cannot be protected based on the trademark
proclamation, if it is not entitled protection as a well-known trademark under the international
convention to which Ethiopia is a party. The requirement of entitlement of protection as a
well-known trademark under the international convention excludes the foreign trademarks
which are well-known in Ethiopia and may also in a few countries but not well-known under
the international convention. Thus, the intention of the proclamation, as inferred from the
wording of the proclamation, seems to be in compliance with the international obligation and
not with the intention of protecting the consumers‟ interest of the country. This disregards one
of the basic rationales of the trademarks, which is protecting the interest of the consumers.
Considering the problems happening, in Ethiopia, related to the foreign IP protection in

general and foreign (international) well-known trademarks in particular, the EIPO submitted a
proposal to the responsible organ to sign the Paris Convention, but unfortunately, the country
doesn‟t join the convention till now.299 The country was trying to join the WTO in the last two
decades, through which the country becomes a party to the TRIPS agreement but this is not
yet realized.
Thus, there will not be any protection to the foreign well-known trademarks under the
trademark proclamation so long as Ethiopia does not join these international instruments.
Hence, there is and will no protection under the trademark protection even in the existence of
298
For Detail, see TRIPS Art 16
299
Romel Moges, Supra note 23, P. 116 “Citing” Interview with the EIPO Director General, Ato Erimias
Yemanemariam (Dec. 25, 2017)
64
consumers‟ confusion till Ethiopia join these instruments, which is also against the rationales
behind protecting trademarks. This shows that, currently, there is no special protection of
international well-known foreign trademarks in Ethiopia.300
Art 26, which enshrines the exclusive rights of a trademark holder, provides that the
trademark holder has the right to use or authorize any other persons to use301 and to exclude
others from using a sign resembling which likely mislead the consumers.302 These rights are
only conferred to the trademark holder by the registration of his/her trademarks. The
likelihood of „confusion of the consumers‟ is taken as a benchmark to exclude others from
using the same trademarks. However, since the provision is applicable only for the registered
trademark, the consumers are not still in protection in the case of unregistered well-known
trademarks.
The gaps in the protection of consumers from confusion by fake foreign well-known
trademarks under the stated basic provisions are also reinforced by the provisions of the
proclamation which provide mechanism of enforcement. In the case of infringement of the
rights under the trademark proclamation, it does not consider that consumers may be affected
by the infringement and does not create a way that enables them to claim their rights. The
civil remedies provided under the proclamation are applicable only in the case of a dispute
between a trademark holder and another infringer (mostly the producer or distributor) for it
stated that the compensation for damage is equal to the net profit of the defendant by the use
of the trademark or the amount of the royalty the defendant could have been charged had he
used the trademark under the terms of a license agreement.303
Besides to the civil remedies, the provisional measures to be taken at the customs port or
station by the customs authority is made by an application of the trademark holder with a
trademark registration certificate who can show his ownership.304 Thus, the foreign well-
known trademark owners or consumers associations, if any, which stand to serve the interest
300
Ibid, P. 78
301
302
Ibid, Art 26(2)
303
Ibid, Art 40 (2)
304
Ibid, Art 42(1)
65
of the consumers, have no right to apply for the action of seizure or detaining to be taken by a
customs authority.
Hence, though the general purpose of the proclamation is to protect the interest of the
consumers in addition to the interest of the producers, the particular provisions are only
protecting and considering the interest of the producers, which disregards critical
purpose/rationale of trademarks. If trademarks are effectively protected, the producers of
goods and services with original trademarks encouraged to produce their products with
consistent quality.305 However, the absence of effective protection discourages the producers
for their marks are disturbed by the producers of products with fake marks while it encourages
the latter to exploit the trademark of others by confusing consumers using identical or similar
trademarks with the original marks. This becomes more set off/overblown in the well-known
trademarks.
The current Ethiopian trademark protection system does not protect the foreign well-known
trademarks, for the fact shows that the country doesn‟t join the international agreements/
conventions which deals with and for reason that the foreign well-known trademarks which
don‟t have established business in Ethiopia are not protected, even those whose identical or
confusingly similar trademarks are circulating in the market and confusing consumers. Thus,
it discourages the producers of products with original foreign trademarks to produce and
export goods and services with good quality consistently, while it negatively encourages the
producers with fake trademarks by enabling the producers to sell their low-quality products in
the name of other well-known trademarks which are known by their good quality. This in all
is also materialized through confusing consumers.
It is important to pose here the prominent case which passed through four years litigation from
the EIPO to the Hose of Federation (HoF). Though one case couldn‟t be sufficient to see the
court jurisprudence, it is necessary to discuss the decisions of the HoF for its decision has
binding and precedence effect on future similar cases i.e. the decision serves as a law until
repealed by the HoF itself.
305
66
The case between the Six Continents Hotels V. Crown Hotel306 was opened at the EIPO when
Six Continents requested to register the trademark of Crowne Plaza Hotels & Resort,
following its franchising agreement with Tsemex Hotels & Business Plc. The Six Continents
is the parent company of the Crowne Plaza Hotels & Resort.307
In the examination phase, Mrs. Zewditu, the owner of the Crown Hotel, opposed the
registration of the Crowne Plaza Hotels and Resort stating that it has similarity with her
Hotel‟s trademark and thereby it creates a likelihood of confusion.308 Accepting the opposition
and the stated reason, the Trademark and Industrial Design Protection and Development
Cluster (hereinafter the Cluster) of the EIPO, the then mandated to entertain the case, rejected
the registration of the trademark on May 17, 2014.309 However, the Cluster retried the case
upon the application of Tsemex as an interested party on Aril 6, 2015 and reversed its first
decision considering the effect of the decision in promotion of investment.310 The Cluster
disregards the effect of the confusing trademarks for the mere reason of promoting
investment.
Mrs. Zewditu appealed to the appellate committee of EIPO raising the priority right and the
confusion effect of the mark. The Appellate Committee confirmed the decision with a
different premise that there is a difference in the color and symbols used to represent the two
trademarks and the likelihood of confusion couldn‟t exist because of the differences of the
level of awareness of the Hotels and the economic status of the consumers.311
The above decision was also confirmed by the Federal High Court‟s 14th Civil Bench with the
same reason of the Appellate Committee of the EIPO. 312 The case was taken to the Cassation
Bench by Mrs. Zewditu. The bench reversed and decided in favor of the applicant with the
306
Romel Moges Supra note 23, P. 108-110 “Citing” Crown Hotel V Six Continents Hotels, (Federal Supreme
Court Cassation Division, June 29, 2016) (unpublished)
307
Ibid
308
Ibid
309
Ibid
310
Ibid
311
Ibid
312
Haimanot Ashenafi, Crowne Beats Crown in Milestone Ruling: Addis Fortune, Availabe at
https://addisfortune.net/articles/crowne-beats-crown-in-milestone-ruling/ last visited on: June 20, 2020
67
justification that individual rights should not be deprived for the mere reason of promotion of
investment to encourage investment and that their co-existence could create confusion.313
Then after, Six Continents took the case to the HoF, where the case was reviewed by the
Council of the Constitutional Inquiry (CCI). The House then passed the suggestion of the
inquiry by a majority vote, claiming that the both marks could co-exist without creating
confusion and that the Cassation‟s decision would discourage foreign direct investment (FDI),
on October 10, 2018. It ordered the ruling made by the Cassation to be repealed and the
Supreme Court to execute the judgment.314
Muluye Welelaw, the legal director at the House, in an interview with Addis Fortune stated
that “The judgment of the House considered the national interest by way of generating hard
currency, the creation of job opportunities, attracting tourism and technology transfer.”315
According to Assefa Feseha, associate professor and a well-known expert on constitutional

laws at Addis Abeba University, in an interview with Addis Fortune “the House failed to
protect an Ethiopian national, even though one of its justifications is furthering the national
interest, the foreign company will eventually repatriate its income while the local one would
reinvest it". He added, “he believes that the only issue that should have been taken into
consideration is the case of the trademarks – whether it would confuse potential customers or
not.”316
Though this case doesn‟t directly relate with the protection of consumers from confusion by
fake-foreign well-known trademarks, it has an implication on the protection of consumers
from confusion. As it could be learned from the response of Assefa Feseha and Muluye
Welelaw in an interview with Addis Fortune, the decision of the HoF didn‟t take the
likelihood of confusion of potential consumers in to consideration and as the decision of the
HoF has binding and precedent effect for future similar cases, one can easily note that the
decision of the House will make EIPO and the courts to give more emphasis for promotion of
investment than the likelihood of confusion and similarity of the trademarks promotion.
313
Ibid
314
Ibid
315
Ibid
316
Ibid
68
Besides, the case confirmed the absence of effective guidelines in EIPO to determine the well-
known aspect of foreign/international well-known trademarks in the examination phase.
All the above facts are also reinforced by the proclamation which regulates the trade-names
for it failed to exclude registration of unregistered well-known trademarks as a trade-names
while it excludes the registering unregistered well-known trade-names as a trade-name.317
However, if we look at the laws of other jurisdictions, they exclude the registration of
unregistered well-known trademarks from registration as trade-names.318 The respective
official also noted that “using foreign well-known trademarks as a trade-name is common and
not excluded by the law”.319 This enables vendors to register foreign well-known trademarks
as domestic trade-names, which leads consumers into confusion.
4.2.2. Under the Trade Competition and Consumers Protection Proclamation
Economic liberalization is considered as a good economic tool for there is a belief that robust
competition between commercial rivals keeps prices low, quality high, and provides overall
economic efficiency.320Thus, competition law bases on the premise that healthy competition
delivers a good opportunity for both traders and consumers i.e. if traders compete on a level
playing field, they will flourish, and consumers are more likely to pay lower prices, and get
better quality and more choice.321
However, the market fails to provide an efficient allocation of resources in the presence of
imperfect competition. To combat these conditions, countries regulate business behavior by
enacting competition laws, through which the government tries to prohibit anti-competitive
actions and ban acts of unfair competition.322
317
Commercial Registration and Licensing Proclamation no. 980/2016, 5 th August 2016, Art 16(c), Neg. Gaz.
Year 22, No.101
318
Romel Moges, Supra note 23, P. 114 “Citing” Mingde Li, Well-Known Trademark Protection: A
Comparative Study between Japan and China, IP Bulletin, (2007)
319
Ibid, “Citing” Bewket Abebe interview with Director of business licensing and registration, MoT
320
Alemayehu Fentaw, Ethiopian Unfair Competition Law , The University of Oxford Centre for Competition
Law and Policy, Working Paper CCLP (L) 21 Nov, 2008, P.1
321
Ibid, P. 2
322
Ibid
69
Competition laws promote market competition by regulating anti-competitive conduct or
unfair trade practices of companies through public and private enforcement modalities.323 It
aims to secure fair competition for traders through the preservation of goodwill and enhancing
market competitiveness to, among other things, safeguard consumers‟ interest.324 One purpose
of the rules against unfair competition is therefore to protect the interest of consumers by
preventing a second entrant from unfairly appropriating the value of a successful trademark,
service mark, or trade dress. Thus, the protection of trademarks has evolved as a form of
protection of the consumer by ensuring that purchasing decisions are based on marks that
properly identify the product and its source.325
The trade competition and consumers protection proclamation of Ethiopia (hereinafter the
TCCPP) was proclaimed with the purpose of creating a system which enables to protect the
business community from anti-competitive and unfair market practices, protect consumers
from misleading market conducts and to create a system conducive for the promotion of the
competitive free market.326 Besides, the Proclamation is also promulgated “to create a
conducive environment by which consumers get goods and services equivalent to the price
they pay.”327 The Proclamation tries to protect the interest of the consumers through, among
other things, preventing the misleading of consumers i.e. including misleading use of fake or
confusing trademarks. In support of this statement, the Director of Trade Competition and
323
Michael Tilahun, Ethiopian „Unfair Competition‟ rules: Competition Proper Rules or a Misnomer Referring
to Anticompetitive Unilateral Acts?,
https://int.search.myway.com/search/GGmain.jhtml?n=78670fea&p2=%5EBXM%5Exdm197%5ES35684%5
Eet&ptb=EBC1B7E7-16E5-4998-B83A-2F4B5D1CA689&qs=&si=&ss=sub&st=tab&trs=wtt&tpr=ss-
hs&enc=2&searchfor=lJyJbn_-vR9eA35egoIizq-
hEPaXTrp97DmRNkhNQqmVo5wMMBkS3_xb8KBLl06vWSNYZoKQgcsic77t_ioBpFZSW1XwH58OA9
KZctMSOOKW7-2mVFST04UNUwdoNrYW-
mKZ05Fm4Mn2uV1vH24s8fC6FSSgmc666SFc6ZherlwoS5M7TDOF7_djuAhn0A19HYC7kYJYYb40ns2j
6Wq9K_Z2LsRhbXm3N8kn4vfs0mg2UYRu3BGJx-
s1QzBalJIGBAiHmFbH9BSev8iRBWmmzjuInnFNIzpN0Lo_IbIr-
lTILk4iBsPsjZ_2kS4FiJ9tEqiO92N71Yddaxiefx4EOQ&ts=1584690080471 last visited on March 20, 2020
324
Alemayehu Fentaw, Supra note 320, P. 3
325
Ibid, P.3
326
TCCPP, Preamble Para 2 and Art 3(1)
327
Ibid, Preamble Para 3 and Art 3(2)
70
Consumer Protection Directorate328noted that “the basic reason for the establishment of the
office is to protect consumers from confusion in the market.”329
These rationales are also reflected in the different provisions of the TCCPP. It is prohibited in
the proclamation for business persons to act in a dishonest, misleading, or deceptive way
while carrying out trade in a business competition.330 If a person acts in a way that causes or is
likely to cause confusion with respect to another business person, it is considered as an act of
unfair competition.331 This provision is mainly concerned with the preservation and
maintaining of the rights of business persons and, ensuring fair competition between business
persons. It could be validly inferred from the wording of the provision “any act which may
lead to confusion” that the provision includes an act of confusion through the fake or
confusing trademarks. Thus, this indirectly protects the consumers for the provision is trying
to eliminate/ reduce the confusion of consumers by fake or confusing trademarks. Hence, this
provision will benefit the consumers and business persons by covering the gaps in the
trademark proclamation provided that the unclear legislation may have an effect on confusion
where and how to preserve the rights of consumers.
The TCCPP provisions do not provide the right for the individual/consumers the right to bring
suit. However, other countries laws and international soft laws suggest for such kinds of
remedies. The UNCTAD Model Competition Law gives the right to an individual or to the
State on behalf of an individual, or to an enterprise to bring a suit in respect of breaches of
law, in order to recover damages.332
Besides, the TCCPP provides the rights of consumers to get sufficient and accurate
information or explanation as to the types of quality and type of the goods or services s/he
purchases.333 This is also reinforced by providing an obligation on the business persons not to
328
The Directorate is established under the Trade Directorate of the Urban Development, Trade, and Industry
Bureau of Tigray Region
329
Interview with Ato Kasahun Kindeya, Director of Trade Competition and Consumer Protection Directorate,
Bureau of Urban Development, Trade, and Industry of Tigray Region, 27 May 2020
330
TCCPP, Art 8(1)
331
Ibid, Art 8(2)(a)
332
United Nation Conference on Trade and Development (hereinafter the UNCTAD), model law on competition
law: UNCTAD series issues in competition law and policy, (2007) P. 7 & 64
333
TCCPP, Art 14(1)
71
furnish false information on the quality, quantity, volume, acceptance, source, nature,
components, or use of goods or services.334
Furthermore, The TCCPP requires commercial advertisements of goods and services

announced by any means not to be false or misleading through, among other things,
misleading trademarks.335 As it has been discussed in the previous chapters, one of the
functions of trademarks is an advertisement. Hence, the prohibition of misleading commercial
advertisements includes misleading trademarks.
Though the TCCPP tries to include the protection of consumers from misleading trademarks,
its applicability is difficult for the foreign well-known trademarks especially those which are
not registered in Ethiopia for there is no way which enables the Ministry of Trade and
Industry or the Regional TCCP Directorate to determine the well-known aspect of a trademark
by itself as the fact shows that there is no any guideline which enables the latter to determine
the well-known aspect of one mark.336 If it is dependent on the declaration of the EIPO, the
problems discussed above on the foreign well-known trademark protection under the
Trademark Proclamation will follow up still.
Having those rights on the proclamation, consumers have the right to claim compensation
from those who participated in supply of goods or services manufacturer, importer,
wholesaler, retailer, or any other way for the damages s/he has suffered because of purchase
or use of the goods or services.337 However, the compensation that could be claimed by the
consumers is only limited to the damage sustained by the action enshrined under art 14,338
which is more unclear, excluding Art 19 and other relevant articles which are more clear in
protecting consumers from confusion by fake-marks while it generally permits for the
business persons to claim compensation in the damage sustained by the act of unfair
competition.339
334
Ibid, Art 22(1)
335
Ibid, Art 19(7)
336
Ato Kasahun Kindeya, Supra note 329
337
TCCPP, Art 14(5)
338
Ibid, Art 37(3)
339
Ibid, Art 37(2)
72
Besides, for the enforcement of their rights, consumers may report the defects in goods and
services and, the damage the defects may cause to the ministry of trade or to the regional trade
bureau.340 The TCCP Authority has an obligation to conduct an investigation where there is
sufficient ground to suspect based on its own information or information given by any
person.341 However, there is no organ/branch in the regions which could exercise the powers
of the authority based on the proclamation. It is only the consumer protection judicial organ
and appellate tribunal that could be established by the TCCPP.342 But still, as the Director of
Trade Competition and Consumer Protection Directorate of the Tigray Region noted that they
only accept complain from consumers and council them how to initiate and apply their action
before the ordinary courts,343 which takes a long time to entertain. Because of this, he added,
“the consumers don‟t choose to take their case to court for shoe, cloth or other products
valued the same.” The Judicial and appellate organs are not yet established based on the
proclamation in the Region. The Directorate is acting as an administrative unit and is not
active in taking even the administrative remedies.
4.3 The Institutional Framework of Consumers’ Protection from Confusion

by Fake Trademarks in Ethiopia
As it has been tried to see in the above section, the laws are not sufficient to protect
consumers in purchasing a product which bears a fake-foreign well-known trademark. But
still, the protection of consumers enshrined under the Ethiopian well-known trademark
protection laws and TCCPP needs effective implementation by the institutions established to
implement it. This section tries to look at the institutional frameworks of the institutions in
enabling them to combat the confusion of consumers in the market by the fake foreign well-
known trademarks.
340
Ibid, Art 20(1) cum. Art 2(12) and 2(15)
341
Ibid, Art 36(1)
342
Ibid, Art 34
343
73
4.3.1 The Ethiopian Intellectual Property Office (EIPO)
Prior to 2003, Intellectual property administration in Ethiopia was fragmented. Patent was
administered by the then Science and Technology Commission. Copy right related matter was
administered by the former Youth, Sport and Culture Ministry, and the
344
Trademark was handled by the then Ministry of Trade and Industry. All come under one
umbrella after the establishment of the Ethiopian intellectual property office (EIPO) in
2003.345
The EIPO (hereinafter the office) was established as an autonomous gov‟t body having its
own legal personality since April 8, 2003, by proclamation No. 320/2003. The office was
established with the purpose of, in addition to the other objectives, facilitating the provision of
adequate legal protection for and exploitation of intellectual property in the country.346
The office was mainly established to implement the laws and regulations on intellectual
property rights issued by the government.347 These are also achieved through receiving an
application for trademark registration and undertaking the necessary examination348 and
through receiving search requests and rendering search services to determine the existence of
similar registered trademarks before a trademark application is filed.349
The office is composed of the council, the director-general, and other necessary staffs.350 The
council has the chairman members of the council to be designated by the government. 351 The
council has, mainly, an advisory mandate to the office on the policy proposals, guidelines, or
related matters.352
344
Romel Moges, Supra note 23, P. 113 “citing” an interview with a former trademark search, examination and
identification expert
345
Ethiopian Intellectual Property Office Establishment Proclamation No. 320/ 2003, Neg. Gaz. Year 9, No. 40
(hereinafter the Establishment Proclamation)
346
Ibid, Art 5
347
Ibid, art 6(7)
348
Ibid, art 6(1)
349
Ibid, Art 6(5)
350
Ibid, Art 7
351
Ibid, Art 8
352
Ibid, Art 9
74
The Director of Intellectual Property Unit of the Tigray Region noted that their office is
established under the Science and Technology Bureau as Directorate. The Directorate
registers Trademarks in the region and sends it for final recognition and approval to the
Federal EIPO. However, though there is a separate tribunal at the federal level, which
entertains complains comes from trademark holders, there is no such kind of structure in the
region.353
One recommendable principle for efficient and effective enforcement of consumer protection
is the inclusion of different stakeholders in enforcement and compliance activities.354
However, the establishment proclamation established the office without providing for
representation of stakeholders especially from the trademark holders and consumers.
The establishment proclamation provides an obligation on any person, governmental or

private organization or institution to cooperate with the office in the implementation of the
activities.355 However, the practical cooperation with other agencies or authorities in
protecting consumers from confusion is very low, and there is no practical cooperation in the
confusion of consumers by fake foreign well-known trademarks.356
The EIPO protects the interest of persons through a claim made by the persons. One person
can only protect his/her own interests only if he/she goes to and institute a claim in the EIPO.
Otherwise, there is no institutional framework that the EIPO goes down and protect the
interest of the consumers. It is only through registration and bringing of a suit that the EIPO is
trying to protect the interest of different interested persons. The office accepts complain from
the trademark holders only. Though the office indirectly protects the consumers by protecting
the trademark holders, the office does not have any mechanism in which the consumers can
take action/claim to the office. Thus, the consumers can‟t be protected by the office in respect
to the unregistered foreign well-known trademarks, which are required, for protection, to be
subject of protection under the international convention to which the Ethiopia is a member.
353
354
355
The Establishment Proclamation, Supra note 345, Art 14
356
75
In support of the above statement, the Director of Intellectual Property Unit of the Tigray
Region stated that there is no mechanism in which the office could go to the ground and
search for vendors who passed the law. Rather it could receive suit action from trademark
holders.357 He also stated that “identifying the vendors who confuse consumers on the ground
and taking legal action is the obligation of the bureau/ ministry of trade and industry in
general and the trade competition and consumer protection Authority in particular.” He added
that “in the existence of consumer confusion, whether it is a domestic or foreign well-known
trademark, there is no legal and institutional framework in our organ; rather we give only
expert advice to the police whenever case arises”
Not only that, to institute a suit in the EIPO, the applicant is also expected to be a trademark
holder. As it could be learned from the wording of the different provisions of the Trademark
Proclamation, the litigation in the adjudicative organ of the office is to be made between the
trademark holder and infringers. The wording of the civil remedies to be applied which reads
as “The court hearing a case of infringement of a trademark owner‟s rights …”358shows that
the case is between the trademark holder and the infringer. Besides, in case of deciding
compensation, what to be taken into account is the royalty that the defendant could have been
charged had he used the trademark in a license contract or the net profit of the defendant.359
This provision takes into consideration that the applicant is always the trademark holder.
The findings of the research show that the consumers are facing confusion while they are
purchasing products in general and, shoe and cloth, in particular, which carries the fake
foreign well-known trademarks. In an interview with the consumers, Mr. X360 noted that:
“There is confusion by the fake products (i.e. fake foreign well-known trademarks)
in the market place. If you ask me about my personal experience, I had bought two
fake shoes (i.e. shoes with fake foreign well-known trademarks). I identified the
first shoe as it was „Fake‟ from my friends‟ experience, and I took/accept as I have
been deceived. However, in the second I had gone to the shop and asked the trader
357
Ibid
358
359
Ibid, Art 40(2)
360
A consumer of shoe and cloth of a shop found in Kedamay Weyane
76
to change the shoe. But, he tried to deny that whether I bought the shoe from him
(he don‟t remember whether I bought or not). But after I tried to convince him by
raising the time and the situation I had bought, he tried to convince me that, though
the shoe is not original (i.e. with the real mark), it has good quality. I knew that he
wouldn‟t refund me or change it, rather I used it for evocation or notice not sell to
me again products with the fake trademarks for the next time. That is the only way
that I can protect myself from subsequent confusion”
The above facts stated by the consumers are not also denied by the traders. In an interview
with the traders, Mr. Z361, stated that:
“Yes, there are some products which carry trademarks identical with the original
trademarks (i.e. foreign well-known trademarks). Let alone to consumers, they may
also confuse us too. We identify some of them after some time/ through experience
whether they carry original or fake marks. If you ask me personally, I inform my
consumers whether a particular product carries original or fake marks, because, I
want the consumers to be my customers and to buy next time in my shop. I believe
in the long run trading/profit. However, it is a fact that everybody shall purchase a
product observing it carefully or asks the vendor; otherwise, he can‟t claim to
refund or change”
According to the response of the consumers, there are practically confusing goods with fake
foreign well-known trademarks in the market, which are also creating confusion on the
consumers in identifying the products and they don‟t purchase products before they check it in
different shops, which shows that they are suffering from the searching cost. Related with this,
Mr W362 consumer noted that:
“… if I were sure that the trademark is real, I would buy simply without spending
much more time in rolling here and there in different shops: but now I purchase
after I roll into many shops and I checked whether the product is original (real
trademark)”
361
The Shop Owner of Shoe and Cloth with both Fake and Original Foreign Well-Known Trademarks in
Kedamay Weyane
362
A Consumer of Cloth And Shoe of a Shop Found In Kedamay Weyane
77
Another consumer also noted that it is difficult to take easily the loss that you bought from
1800 up to 2800 Ethiopian Birr for one shoe. Similarly, another consumer also noted that “…
the shoe I purchased 1800 Birr before 1 year was teardown within two weeks. Thus it is a high
loss you may face if you are deceived.”
In support of the above complains, the Director of Intellectual Property Unit office of Tigray
Region noted that “yes, there is a confusion of consumers in the market. The main problem
for this is the absence of our community awareness of its rights and duties.”363 He added that
“there is a practical problem in the executive in taking action on the traders who confuses
consumers and this is reinforced by the low awareness of the community”.
Though the EIPO has also the obligation to design and implement extensive and coordinated
popularization strategy to create and strengthen awareness about intellectual property among
the general public364, the public has no awareness of its rights and duties. Hence, the office is
not effectively implementing its obligation, which escalates the confusion of consumers.
The measures in the customs port are also applicable when the applicant has a certificate of
trademark registration and (not “or”) other relevant pieces of evidence. As it reads “The
Customs Authority may, on the basis of a written application accompanied with 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 which are subject to the
alleged infringement of the applicant‟s right.”365 It can be easily inferred from the wording of
the provision that to apply in the customs authority, there must be a certificate of the right
holders, which excludes unregistered well-known trademark holders.
Generally, though the trademark proclamation has the purpose of protecting consumers from
confusion by ensuring their choice and interest as it can be inferred from its preamble, the
proclamation is not framed in a manner to protect consumers from confusion by fake
trademarks in general and foreign well-known trademarks in particular. Having this legal gap,
there is no institutional arrangement in the EIPO, which enables it to accept a suit/claim from
consumers confused by fake foreign well-known trademarks. It is considered that the
363
364
The Establishment Proclamation, Supra note 345, Art 6(10)
365
78
protection of consumers on the ground is not the obligation of the office rather the obligation
of the trade competition and consumer protection Authority.
As can be learned from the responses of the traders and consumers, the findings show that
there is confusion of consumers in the market place by fake foreign well-known trademarks.
The researcher observed the consumers confusing by the fake foreign well-known trademarks
and some of the consumers asking „whether the product carries original or fake mark‟ to the
vendors. Besides, the consumers are rolling to purchase one product which leads them to
suffer from the searching cost and the consumers are facing a loss of the value of the products
when they are deceived by the fake foreign well-known trademarks.
The institutional framework of the office excludes participation of different interested groups
including consumers, which would have great importance in the implementation and
consideration of different interests based on the law. Besides, there is no practical cooperation
with other organs in protecting the consumers from confusion by fake foreign well-known
trademarks.
4.3.2 The TCCP Institutions
Part four of the TCCPP provides the establishment of the federal trade competition and
consumers protection authority (hereinafter the Authority) and the appellate tribunal
(hereinafter the Federal appellate tribunal). Besides, it authorizes also for the establishment of
the regional consumers‟ protection judicial organs (the regional judicial organs) and the
appellate Tribunals (the regional appellate tribunals).
The Authority has the powers and duties to take appropriate measures to develop an
awareness of the public on the provisions of the proclamation and to protect consumers from
unfair practices of business persons as provided under Art 8 of the proclamation.366
The Authority has also the powers and duties to organize the judicial organs with jurisdiction
and to establish procedure enable to resolve disputes arise between traders or between
consumers and traders via mutual agreement and negotiation.367
366
TCCPP, Art 30 (2) &(8)
79
The federal adjudicative branches have also the judicial powers to take administrative
measures and/or impose a fine penalty and to order compensation in accordance with the
relevant laws to consumers victimized by transactions conducted in the Addis Ababa or the
Dire Dawa cities.368 The Federal Appellate Tribunal has also the powers to hear and decide on
appeals against decisions of the adjudicative branches of the Authority.369 As regions are
allowed to establish consumers‟ protection judicial organ and appellate tribunal370, the regions
could have the judicial organ and appellate tribunals. However, there is no mandated organ in
the regions which could exercise the powers of the Authority.
The Federal Authority is mandated to conduct investigations371 where there is sufficient

ground to suspect, based on its own information or information given to it by any person, that
an offense has been committed anywhere entailing administrative measures and
administrative penalty. However, the practice in the study area shows that any investigation
has not been made by the authority related to the confusion by fake foreign well-known
trademarks. An action for taking administrative measures and imposing administrative
penalties by the adjudicative bench of the authority or imposing criminal penalty by the
competent federal court shall be instituted by a prosecutor of the authority.372
The Authority is to be composed of judges, investigative officers, and other staff.373 The
Authority shall have its head office in Addis Ababa and may establish branch offices
elsewhere as may be necessary.374
One of the best practice principles for effective regulatory enforcement is the involvement of
different interested stakeholders, such as the market forces, the private sector, and civil society
in enforcement and compliance activities. Thus, wherever possible these stakeholders should
367
Ibid, Art 30(9) & (10)
368
Ibid, Art 32(1)(a)&(c)
369
Ibid, Art 32 (2) (b)
370
Ibid, Art 34
371
Ibid, Art 36(1)
372
Ibid, Art 37(1)
373
Ibid, Art 28
374
Ibid, Art 29
80
participate because the problems cannot be solved only through inspections and
enforcement.375
However, the TCCPP has established the Authority without providing for representation of
stakeholders especially, from the private sector and consumers.376 The failure to provide for
the representation of stakeholders in the Authority could contribute to the challenges in
enforcement because competition and consumer protection in a market economy involves the
interests of the business community and consumers in addition to the government.377
In addition to the above gaps, except for some sort of work processes established by the
regions under the Regional Trade and Industry Bureaus, there is no independent consumer
protection authority or agency established by regions nor do they have independent consumer
protection law. Even though the law envisages the establishment of a regional consumer
protection judicial organ, it does not give administrative power to the organ; nor does it give
the power to investigate and institute action against violators.378 The regional consumer
protection judicial organs are not yet established in Tigray Region.
In support of this, the Director of Trade Competition and Consumer Protection Directorate of
the Urban Development, Trade and Industry Bureau of the Tigray Region noted that we
provide the council the consumers how-to institute their case in the ordinary courts,379 which
is out of the institutional framework of the TCCPP. The TCCPP provides for the
establishment of the judicial organs (the regional tribunal and appellate tribunal) in the
regions. However, the Trade Competition and Consumer Protection Directorate in the Urban
Development, Trade and Industry Bureau of the Tigray region, is limited in exercising the
counseling of consumers. It does not have the regional tribunal and regional appellate tribunal.
Besides, Ato Kasahun noted that,
“Our community does not have the habit of asking receipt for a transaction, which
would help us to differentiate the confusing vendors. So it is difficult to find those
375
376
Ibid, P. 97
377
Ibid
378
Ibid, P. 99
379
81
vendors. Generally, our community does not have enough awareness of the rights
of the consumers
Besides, the products, which are required to fulfill the quality requirement, are
required to be sealed to pass and access the market and it will be easy to control
these products. However, out of these products, those which aren‟t required to
fulfill the above quality requirement like shoe and cloth, it is difficult to
differentiate and there is no guideline for that. But, I don‟t think that we have an
obligation to protect the consumers while the foreign well-known trademarks are
not identified and protected in the trademark system. How can we differentiate
them?! ”380
The trade competition and consumer protection Directorate is not effectively functioning its
obligation to create awareness and it is also considering that it has an obligation on those
which could be differentiated by the office as they are creating confusion and identifying the
well-known aspect of foreign well-known trademark is also out of their scope.
Besides, in the existence of the confusion, the consumers noted that the solution for refund or
change is only dependent on the willingness of the vendors.
In the existence of confusion, some traders state that they don‟t refund for the back of the
products, especially for those who couldn‟t be remembered by the traders. Some traders also
stated that consumers may buy products that carry fake foreign well-known trademarks and
may come to them as if they buy from their shop. Thus, they don‟t refund. However, if they
remember them and the product is not used, they may change by other products with equal
value or adding some price. But no price is returned for a paid invoice.
Other traders also state that, if they are their customers and if they assure their confusion, they
change or refund them for the purpose of their customer-trader relationship. But, they added,
it is only if the consumer does not use it.
380
Ibid
82
Though the authority has obligation to create public awareness on the provision of the
proclamation381, the public awareness is low as it can be learned from the response of the
consumers, the traders and the Director of the trade competition and consumer protection
Directorate, in the existence of confusion of consumers, and that is why the existing practical
solution for the consumers are only dependent on the willingness/consent of the traders. This
is also reinforced by the unclear statements of Art 14, in which the consumers can claim
compensation, whether they do have application in case of confusion by foreign well-known
trademarks, as it has been stated above.
Having the institutional gap of failure to have tribunals in the Intellectual Property office and
the Trade competition and consumer protection Directorate of Tigray Region, the consumers
also responded that, even though they get the access to take their case to the ordinary court,
they will not take it because the court processing takes much time and they don‟t want to
waste that time for a cloth or shoe, which is valued from 1800- 2800 Birr.
As Tessema stated cooperation and coordination of the authority in charge of consumers‟

protection with other organs that have a similar objective is vital for the proper
implementation of consumer protection by avoiding conflict between the institutions.382
However, as Ato Kasahun noted, as to the protection of consumers from confusion by fake
foreign well-known trademarks, though they have cooperation in creating awareness of their
experts, there is no practice of cooperation between the Trade Competition and Consumers
Protection Authority and the EIPO.383
Besides, there is no guideline that enables the trade competition and consumer protection
office to identify the well-known aspect of foreign well-known trademarks. Ato Kasahun
noted that “If the confusion is because of fake foreign well-known trademarks, it is the
381
TCCPP, Art 30(2)&(6)
382
Tessema Elias, Supra note 190, P. 89, “Citing” David Miller, Competition and Consumer Protection: The
Relationship in Practice in Jamaica, 5th IDRC PRE-INC Forum on Competition and Development, Available
at <http://www.competition_and_consumer_protection_the_reletionship_in_practice_in_Ja
maica_Mr_David_Miller.sflb.ashx.pdf>
383
83
obligation of the EIPO to identify its well-known aspect and we don‟t have any guideline to
identify the well-known aspect of foreign well-known trademarks.”384
384
Ibid
84
CHAPTER FIVE
CONCLUSION AND RECOMMENDATION
5.1 Conclusion
Trademarks become well-known through different efforts of consistence advertisements or

other modalities of communication. Besides, Consumers, while they consume different
products, may like the quality and/or aesthetic aspect of some products and try to identify the
products‟ trademark which they want to buy subsequently. Thereby, the trademarks may
become well known to many people through time. Some other producers also want and try to
use the well-known trademarks of others in their products to exploit goodwill of the well-
known trademarks i.e. by confusing the consumers. To protect consumers from this confusion,
there should be a sufficient legal and institutional framework. However, there is confusion of
consumers here and there in the market by fake-foreign well-known trademarks in Ethiopia.
This research has, thus, tried to explore the relevant laws and institutional frameworks for
protecting the consumers from confusion by fake-foreign well-known trademarks. It has also
tried to answer their sufficiency in practice of protecting the consumers from confusion in
Mekelle, Tigray Region. To this end, the both doctrinal and non-doctrinal research
methodology and, qualitative research approaches were used. Semi-structured interview was
made with traders, consumers and relevant experts, in addition to observation of the market.
Thus, the findings of the study show that:
Though there are also other additional accepted rationales, one of the notable historical
rationale of the trademark protection, including well-known trademarks protection, is to
protect the community/consumers from confusion and to benefit the society of the consistence
quality of the well-known products from the same producer who cares more for its/ his/her
own goodwill and future market. The Ethiopian trademark proclamation also takes the
protection of consumers from confusion as one purpose of the proclamation. However,
coming to the specific provisions, particularly the provision which protects the foreign well-
known trademarks, it disregards this objective. The researcher argues that it seems as it has
been included to protect only the interest of the producers for the protection is totally
85
dependent on being Ethiopia a party to an international convention, while the products are still
crossing the border and being distributing in the Ethiopian market. Besides, the law only aims
to protect the foreign well-known trademarks if Ethiopia is a party while the fact Ethiopia is
not a party to the prominent/ dominant conventions/ international instruments related to the
protection of trademarks. Thus, Ethiopia does not protect the foreign well-known trademarks,
though they create confusion on the consumers, which also disregards the main
rationales/historical rationales of protection of trademarks in general and well-known
trademarks in particular.
The EIPO determines the well-known aspect of foreign well-known trademarks by observing
the WIPO database and by no one else. However, a particular trademark could be well-known
in Ethiopia with-out being included as well-known in the WIPO database and the vice versa.
Besides, the proclamation provided the requirement of protection of the trademark as a well-
known trademark in the international convention however, it is not only the well-known
trademarks recognized and protected under the international convention as a well-known
trademark has an effect on the social and economy of the community, but also the trademarks
which are well-known in some countries, though not protected as a well-known trademark
under the international convention, may have such effects on the countries.
The TCCPP was promulgated with the main intention of protecting consumers from the
misleading markets‟ conduct and unfair market practice. There is no clear provision on the
applicability of the proclamation for the foreign well-known trademarks. However, the
proclamation could protect the consumers from confusion by fake foreign well-known
trademarks through legal interpretations of Art 22(1), which prohibited furnishing false
information about the source of the goods or services and Art 19, which prohibited misleading
commercial advertisement. Furnishing false information or misleading advertisement about
the quality of the product could be interpreted to include information or advertisement
delivered through trademarks. However, there is still the difficulty of applying the law for the
Authority or the respective regional bureau to determine the well-known aspect of one
trademark as the fact shows that there is no guideline which enables the Authority or the
respective regional bureau to determine the well-known aspect of a trademark. Besides, if it
were dependent on the declaration of the EIPO, the problems still exist that there is no
86
guideline in the office too, which enables them to determine the foreign well-known
trademarks except observing the WIPO database.
As has been discussed above, there is a gap in the trademark proclamation in protecting
consumers from confusion by fake foreign well-known trademarks. Similarly, though the
TCCPP may be argued to include the consumers‟ protection from confusion by fake foreign
well-known trademarks, the proclamation limited the rights of consumers to claim
compensation only to the prohibited actions enshrined under Art 14, which is more unclear,
than those the statements provided under art 19 and 22, whether the provision covers the
protection of consumers from confusion by fake foreign well-known trademarks.
In the market, the consumers are facing confusion while they purchase shoes and clothes by
fake foreign well-known trademarks. Such has been also reinforced by the observation of the
researcher that the consumers are facing confusion. The consumers are also facing the
problem of spending much more time in choosing and assuring through circulating in a
different place to check whether the particular shoe or cloth has a real or fake mark. Besides,
the consumers are also facing the economic loss for being misled by the fake foreign well-
known trademarks.
The consumers consider that there is no place where to take their case if they face confusion.
Rather they consider that the return or change of the product they purchase because of
confusion by the fake foreign well-known trademarks is dependent on the willingness/consent
of the vendors, which also confirmed by the response of the vendors.
There is no institutional framework in the EIPO which enables the office to accept and
entertain claims from non- registered trademark holders including the unregistered well-
known trademark holders (if the holder is not protected under the international convention to
which Ethiopia is a party), and consumers. The interest of consumers is not given due
consideration in organizing both the council and executives of the office. Thus, there is no
institutional framework in the office which enables it to protect the interest of consumers‟
confusion by fake foreign well-known trademarks.
87
Though the institutional framework of the offices organized under the TCCPP has well-
identified arrangements, there is no organ or institution to be established in regions mandated
with the powers of the Authority. This is also reinforced by the fact of the absence of
investigation conducted to identify the existence of consumers‟ confusion by fake foreign
well-known trademarks. Besides, the institutional arrangement does not recognize different
interested groups under the appointment of members of the Authority.
Since the law is not clear on who is clearly mandated to protect consumers from confusion by
fake foreign well-known trademarks through differentiating the confusing trademarks by
identifying their well-known aspect, there is confusion in the trade competition and consumer
protection Directorate on whether they do have an obligation in protecting the consumers
from confusion by fake foreign well-known trademarks.
Both the Tigray Region Intellectual Property Unit office and, the trade competition and
consumer protection Directorate do not have tribunals to entertain real cases on consumer
confusion. The cases are entertained by the ordinary courts, which takes much time and may
lead the consumers to remain silent than taking their case to court as the consumers state that
they do not have the courage of taking their case to ordinary court for the value of the good
and services are incomparable with the cost and time of the court proceeding.
Generally, the existing legal and institutional frameworks are not sufficient in practice in
protecting consumers from confusion by fake-foreign well-known trademarks. The
protections of foreign well-known trademarks are still up on air until Ethiopia joins
international conventions which deal with the protection of trademarks in general and well-
known trademarks in particular. Besides, the TCCPP also lack clarity in protecting confusion
of consumers by fake-foreign well-known trademarks. Thus, the consumers are facing
confusion by fake-foreign well-known trademarks in the market and are not getting sufficient
protection in practice.
88
5.2 Recommendation
In view of the above findings and concluding remarks, the writer suggests the following
recommendations;
1) Like other countries‟ experience, the Ethiopia trademark proclamation has taken
protection of the consumers‟ interest as one rationales of the proclamation. However,
currently, Ethiopia does not protect the unregistered foreign well-known trademarks
under its trademark proclamation, though the trademarks could create confusion on the
society because the protection is dependent on the joining of the country to an
international convention in which these trademarks are protected. Thus, it is
recommendable for the country to take the protection of the foreign well-known
trademarks into consideration, without waiting to join international conventions and the
law should be amended in a way that protects the interest of consumers such as through
creating a channel which solves the market confusion or enabling the consumers to have
a right to claim or to institute an action.
2) Some foreign trademarks may establish the well-known aspect in Ethiopia but not
internationally. However, such marks could not get protection in Ethiopia so long as they
get protection in the international convention not as a trademark rather as a well-known
trademark. To achieve the high-flyer protecting the economic and social interest of the
community in general and the interest of the consumers in particular, the researcher
humbly recommends that the trademark proclamation has to be amended in a way to
protect the foreign well-known trademarks so long as they fulfill the well-known aspect
in Ethiopia disregarding whether they are recognized and protected under the
international convention as a well-known trademark or not.
3) As there is no clear law under the TCCPP which deals with the foreign well-known
trademark protection in respect of protecting consumers‟ confusion, providing a clear
provision is necessary to protect consumers from the currently happening confusion by
the fake foreign well-known trademarks. At then, the organ entrusted to protect
consumers under the TCCPP has to develop how to identify the well-known aspect of a
89
foreign well-known trademark in Ethiopia to achieve the main goal of protecting
consumers.
4) The TCCPP limited the right of consumers to claim compensation only based on Art 14
of the proclamation, excluding the consumers from claiming compensation based on art
19 and 22 of the proclamation, which are more related to trademarks than the first.
Hence, it would be better for the legislature to clearly enable consumers to claim
compensation in the existence of confusion by fake foreign well-known trademarks.
5) Giving due consideration for the involvement of different interested groups is one of the
necessary element for having an effective and efficient implementation organ. Thus, the
researcher recommends for the office to consider the interest of different interested
groups (one of these are consumers) in the council‟s arrangement.
6) The same problem is also observed in the TCCPP institutional framework. Thus, it is
recommendable to include different interested groups including the consumers in the
institutional framework of the Authority.
7) The power and duty of protecting consumers from confusion by fake foreign well-known
trademarks is being considered as neither the obligation of the trade competition and
consumer protection Authority, for it is confusing whether they have an obligation, nor
the EIPO, which makes the area as vacant. Thus, the researcher‟s humble
recommendation is for the legislature to clarify which organ is mandated to protect the
consumers in the existence of confusion by the fake foreign well-known trademarks.
8) There is no clear understanding of the consumers where to go if they face confusion
because of the fake foreign well-known trademarks. Thus, the Authority and the EIPO
has to surmount their obligation to create awareness of the public in the country in their
respective legislations.
9) To have a fast, expert, and less expensive litigation, which would motivate consumers to
take their case to court, there should be tribunals under the Intellectual Property Unit and
the Trade Competition and Consumer Protection Directorate of the Tigray.
90
BIBLIOGRAPHY
Books
Fikremarkos Merso, The Ethiopian Law Of Intellectual Property Rights: Copyrights,

Trademarks, Patents, Utility Models And Industrial Design (2012)
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Mekelle University

FOREIGN WELL-KNOWN TRADEMARKS PROTECTION IN ETHIOPIA: FROM

A Thesis Submitted to the School of Law of Mekelle University in Partial

MIZAN KIROS GEBREMIKAEL

FOREIGN WELL-KNOWN TRADEMARKS PROTECTION IN ETHIOPIA: FROM

Mizan Kiros Gebremikael

To the School of Law

1. Signature___________ Date ___________

2. Signature___________ Date ___________

3. _______ Signature___________ Date ___________

Mizan Kiros Gebremikael

CCI- Council of the Constitutional Inquiry

CJEU- Court of Justice of the European Union

EIPO – Ethiopian Intellectual Property Office

EC- European Community

EU- European Union

FDI- Foreign Direct Investment

GTA- German Trademark Act

HoF- House of Federation

IPRs- Intellectual Property Rights

NAFTA- North American Free Trade Agreement

MoT- Ministry of Trade

TCCP/P- Trade Competition and Consumer Protection/Proclamation

TMD- Trademark Directive of the European Union

TRIPS- Trade-Related Intellectual Property Rights Agreement

TRT- Trademark Registration Treaty

UNCTAD- United Nations Conference on Trade and Development

WIPO – World Intellectual Property Organization

WTO – The World Trade Organization

CHAPTER ONE ..............................................................................................................................1

1.1 Background of the Study ...........................................................................................................1

1.2 Statement of Problems ...............................................................................................................4

1.3 Research Questions ....................................................................................................................5

1.4 Objective of the Study ...............................................................................................................6

1.4.1 General Objective ................................................................................................................6

1.4.2 Specific Objectives ..............................................................................................................6

1.5 Delimitation of the Study ...........................................................................................................6

1.6 Significance of the Study ...........................................................................................................7

1.7 Methodology of the Study .........................................................................................................7

1.7.1 Research Methods ...............................................................................................................7

1.7.2 Types of Data and Data Collection Techniques ..................................................................7

1.7.2.1 Primary Sources of data ................................................................................................8

1.7.2.2 Secondary Sources of Data ...........................................................................................8

1.7.2.3 Selection and Sampling Technique ..............................................................................8

1.7.3 Methods of Data Analysis ...................................................................................................9

1.8 Ethical Considerations ...............................................................................................................9

1.9 Rule of Citation ..........................................................................................................................9

1.10 Limitation of the Study ............................................................................................................9

1.11 General Working Definitions .................................................................................................10

1.12 Organization of the Study ......................................................................................................10

CHAPTER TWO ...........................................................................................................................11

TRADEMARK LAWS AND CONSUMER PROTECTION IN GENERAL ..............................11

2.2.1 The Legal Function ...........................................................................................................14

2.2.2 Economic Function ...........................................................................................................19

2.2.2.1 Reducing the Search Cost ...........................................................................................20

2.2.2.2 The Quality Assurance Function ................................................................................21

2.3 Development of the Modern Functions of Trademarks ...........................................................22

2.3.1 Communication Function ..................................................................................................22

2.3.2 Advertisement Function ....................................................................................................23

1. Signature_ Date _

2. Signature_ Date _

3. _ Signature_ Date _______