Starbucks is “flat wrong” in calling Ethiopia’s licensing efforts illegal

Originally posted here on Feb 8, 2006

EIPO Press Release
8 February 2007

Top U.S. law firm Arnold & Porter LLP refutes Starbucks’ VP claim that signing a license agreement with Ethiopia would be against the law.

Addis Ababa. Starbucks is misleading the public by claiming that Ethiopia’s efforts to trademark its prized coffee brands and license international distributors are illegal, says Robert Winter. Winter is partner at the Washington DC-based law firm Arnold & Porter LLP which has been advising Ethiopia in these efforts. Winter stated publicly today: “There is nothing illegal or unlawful about Ethiopia's program to obtain trademark protection for its coffee marks.” And he went on: “Moreover, there is nothing unlawful about Starbucks entering into a license agreement that acknowledges Ethiopia's trademark rights. To make this claim is flat wrong. Indeed, we believe that Ethiopia already enjoys effective trademark rights in its marks through widespread use of those marks for more than 75 years.”

Winter’s statement is a direct response to the claims by Dub Hay, Starbucks’ VP for coffee procurement, made on YouTube. This false claim is the latest in a series of misleading statements made by Starbucks since Ethiopia first approached the company in early 2005. Further, Starbucks’ representatives continue to state publicly that they know what is best for Ethiopian coffee farmers and refuse to acknowledge Ethiopia’s right to own and protect its valuable intellectual property in this way.

Ethiopia is reaching out to the specialty coffee industry worldwide with an invitation to enter into dialogue with the EIPO and to help shape a long term, mutually beneficial branding and distribution strategy for these coffees.

Of the current status of negotiations with Starbucks, Winter remarks: “Starbucks has expressed some concerns about the specific terms of the license Ethiopia has proposed and Ethiopia is prepared to enter into discussions to try to address those concerns, but there is no point in doing so while the company objects in principle to Ethiopia’s ownership of trademarks.”

“Ethiopia views trademark registrations as important business assets that will better enable it to manage the distribution of its coffees and to establish an effective distribution network”, Winter stated.

Ethiopia’s innovative Coffee Trademarking and Licensing Initiative is set to put Ethiopia’s producers and exporters on a more equal footing with their international buyers and improve the long-term market prospects for these coffee brands. Cooperation and support from buyers at this time demonstrates significant corporate social responsibility, given the critical importance of coffee income to more than 15 million people who earn their living by producing and supplying Ethiopian coffee.

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For further information contact:
Robert Winter, Arnold and Porter
Robert_Winter@aporter.com
T: +1 (202) 942 5161

Getachew Mengistie, Ethiopian Intellectual Property Office, Addis Ababa
gmengistie@yahoo.com
T: +251 (11) 553 4969

Ethiopian Embassy, Washington D.C.
T: +1 (202) 364 1200
www.ethiopianembassy.org

Ron Layton, Light Years IP
ron.layton@lightyearsip.net
T: +1 (202) 547 7515

About the Ethiopian Coffee Trademarking and Licensing Initiative
This initiative is led by the Ethiopian Intellectual Property Office in conjunction the Ethiopia Coffee Stakeholder Committee which includes private and cooperative exporters and other entities supporting the coffee sector. It began in 2004 and has to date registered trademarks for Sidamo, Harar and Yirgacheffe in more than 30 countries. In the USA, the TM for Yirgacheffe was granted in 2006 and the other applications are pending. All three trademarks are registered in Canada, and so are Harar and Yirgacheffe in European Union and Sidamo and Yirgacheffe in Japan.

Licensing negotiations in the USA and other countries began in the second half of 2006. The
Initiative has financial support from the UK’s Department for International Development (DFID), and advice and training from Washington DC-based NGO, Light Years IP, but no funding directly from coffee companies.

Further Background
In 2005, the Ethiopian Ambassador to the U.S requested that Starbucks withdraw their application for a trademark that included the word Sidamo, and which was blocking Ethiopia’s own application. In exchange, Starbucks was asked to accept a royalty-free license agreement covering Sidamo and also Harar and Yirgacheffe. Throughout 2005, Starbucks ignored requests by Ethiopia to cooperate in resolving this matter. Starbucks withdrew its own Sidamo trademark application only after the National Coffee Association USA filed against Ethiopia’s applications at the U.S. Patent & Trademark Office.

Dub Hay, Starbucks VP for coffee procurement is on the Executive Committee and a Board
Director of the NCA.