The court ruled the two companies can co-exist as they operate in different sectors

Mar 9 , 2019

A local prominent coffee exporter, Mullege Plc, lost a fierce trade name court battle at the Federal High Court against Muleg Oil Importer, when the presiding judge ruled that both companies can use the similar trade name.

The lubricant and petroleum products importer Muleg Oil and Mullege Plc have been in court for the last 12 months after the latter initiated a case at the former Ministry of Trade . In its claim, Mullege Plc requested that the oil importer change or alter its trade name, since it is similar to the claimant's trade name.

After reviewing the case, the Ministry revoked Muleg Oil's business license on March 23, 2018. Displeased with the ministry’s administrative action, the five-year-old oil importer took the case to the Federal High Court on March 30, 2018, requesting a reversal of the ruling. In its appeal, the oil company argued that its name cannot be identical with the defendant as it contains the term 'Oil Importer' in the trade name.

"Even when we secured our business license, the Ministry provid[ed] us with the license [after]checking [that] the company's trade name does not overlap with others," reads Muleg's appeal. "Even if the names are similar, it cannot affect either of the companies, as we operate in different business lines."

Mullege Plc, in its preliminary objection, claimed that the case should have been reviewed by an administrative tribunal not a judicial court, citing the nature of the issue.

The court rejected the preliminary objections of Mullege and proceeded to review their statement of defence.

In its statement of defence, the defendant, Mullege Plc, claimed that it has obtained the license as a general importer and can engage in the import of oil. Mullege Plc continued to argue that the business of the two companies could overlap as it, too, can engage in petroleum import and distribution. It also argued that the names of two companies are identical in the Amharic language, sharing the same three letters and sound.

The other co-defendant, the Ministry, filed a similar statement of defence as Mullege Plc, asserting that Mullege Plc can engage in the petroleum import business just like the plaintiff company. The Ministry also asserted that it has revoked Muleg Oil's license, since Mullege Plc obtained the trade name and has prior use of it.

After reviewing the case for 11 months, Ruta G. Tsadik, the presiding judge at the 14th Civil Bench, rejected the plaintiff’s and the former Ministry of Trade  arguments and ruled in favour of the plaintiff.

"Though the one that registered a trade name first has the absolute right to the trade name, the two companies can continue to use their names as it will confuse no one," reads Ruta's ruling of February 7, 2019. "Plus, Muleg Oil has built its own reputation in the business for the past five years."

Abdurahman Mohammed, the lawyer representing Mullege PLC, disagrees with the ruling and plans to appeal to the Supreme Court.

"The existence of the two companies is actually confusing," he said. "We initiated the case after we started receiving correspondence from different companies that were intended for Muleg Oil."

Getnet Yawkal, a legal practitioner and a team member drafting the Ethiopian Intellectual Property Office proclamation, disagrees with the court's ruling, saying the two companies can be considered competitors engaging in the import-export business.

Getnet also believes that the similarity of trade names has disadvantages on both traders and consumers.

"Traders with less prominence in the market will benefit from the reputation of others," said Getnet. "This will affect fair market competition and confuses consumers.”

Elsa Syoum, the legal representative of the Ministry, refused to comment on the issue, while representatives of Muleg Oil were not immediately available for comment.

PUBLISHED ON Mar 09,2019 [ VOL 19 , NO 984]

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