What Are Trademarks?
A trademark is a distinctive mark or sign that distinguishes a person’s products from the products of others in the market. A trademark may be one or a combination of words, letters or numbers. They may consist of drawings, symbols, or other designs such as colour, combination of colours, shape of goods and their packaging. In some countries, non-traditional marks such as holograms, motion, and non-visible signs (sound, smell, or taste) may be registered.
Why Are Trademarks Protected?
Trademarks help businesses distinguish their goods and/or services, build brand identity and consumer trust. Trademarks ensure that consumers can identify the source of a product or service, which helps them make informed purchasing decisions. When a business develops and creates a brand, such brand acquires a reputation and goodwill overtime. These are intangible assets that can be transacted and contribute to the overall value of the business. Trademark protection encourages innovation and rewards trademark owners with recognition, financial profit, and exclusivity. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, who use similar distinctive signs to market inferior or different products or services and profit off the existing market reach of a brand.
Where a trademark is registered at the Nigerian Trade Marks Registry (the Registry), the proprietor enjoys legal protection provided under the Trade Marks Act. Trademarks are territorial rights, and as such, their protection is obtained by national registration. This means that the Applicant must seek registration of its trademark in every territory where it desires to use it.
Overview of Trademark Registration in Nigeria
The primary legislation for trademark registration and protection is the Trade Marks Act (the Act). The major requirement for registration of a trademark is distinctiveness. A trademark is distinctive if it is adapted in relation to the goods for which the trademark was registered, to distinguish the proprietors goods or services from those of other proprietors. A trademark may consist of at least one of the following:
• the name of a company, individual, or firm represented in a special or particular manner.
• the signature of the Applicant for registration or some predecessor in his business.
• an invented word or invented words.
• a word or words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname.
• any other distinctive mark.
Disallowed Registrations
The following cannot be registered as trademarks in Nigeria:
• Deceptive or scandalous matters or designs or any matter that is likely to confuse or is disallowed by law.
• Names of chemical substances.
• Identical or confusingly similar trademarks.
• Geographical names in their ordinary signification.
Please note that the court or the Registrar may, in the case of honest concurrent use, or other special circumstances which, in the opinion of the court or the Registrar, make it proper so to do, permit the registration of trademarks that are identical or confusingly similar in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the court or the Registrar, as the case may be, may think it right to impose.
Requirements for Trademark Registration
• The following details are required for a trademark registration:
• Applicant’s details (i.e., name, signature, nationality, and address)
• A representation and details of the mark.
• The classification of goods and/or services (Nigeria uses the Nice Classification of Goods and Services)
• A signed Power of Attorney authorizing an agent to register on behalf of the proprietor.
Procedure for Trademark Registration
Registration of a trademark in Nigeria occurs through the following stages:
• Availability Search: The initial step is conducting an availability search at the Registry to confirm that no existing marks conflict with the proposed mark.
• Application: Upon confirmation of no conflicts, an application is filed at the Registry. After submission of the application form and payment of the applicable fees, the Registrar issues an Acknowledgement Notice that includes a temporary application number and the official filing date.
• Acceptance: Where the application is approved upon examination by Registry officials, the Registrar of Trademarks will issue an Acceptance Notice, usually between one (1) and two (2) months. However, a mark may be refused where it is considered a disallowed registration, in which case an applicant may make written representations to the Registry, who will then conduct a hearing before giving a written decision.
• Publication: Upon accepting the application, the Registrar publishes the notice of the application in the Nigerian Trade Marks Journal to notify interested parties who may have objections to the application. The opposition period is two months from the date of publication.
• Registration: Where there is no objection or where an objection raised has been dismissed, the Applicant may apply for the issuance of a Certificate of Registration, and subsequently, a Certificate of Registration would be issued by the Registrar of Trademarks between three (3) to six (6) months after payment of the Sealing Fees.
Duration of Registration
In Nigeria, a trademark is registered for an initial period of seven (7) years from the filing date and can be subsequently renewed indefinitely, each time for a period of fourteen (14) years.
Trademark Renewals
A trademark registration may be renewed by filing the prescribed form and payment of renewal fees at the Registry. An application for trademark renewal may be filed at any time not more than three months before the expiration of the registration. Late renewal of a trademark is permitted if the renewal fee, together with the penalty for late renewal, is paid within a month of publication by the Registrar of the notice of the expiration of the registration of the trademark.
Rights Conferred by Trademark Registration
The registration of a trademark (other than a certification trademark) in respect of any goods, confers on the proprietor of the registered trademark the exclusive right to the use of that trademark in relation to those goods. Accordingly, that right shall be deemed to be infringed where any person who, not being the proprietor of the registered trademark or a registered user thereof, using it by way of the permitted use, uses an identical or a confusingly similar mark, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either as being used as a trademark; or as importing a reference to some person having the right either as proprietor or as registered user to use the trademark or to goods with which such a person as aforesaid is connected in the course of trade.
Nigeria operates first-to-file system. Thus, the owner of the mark who first files his application with the Registry has priority over anyone using an identical or a confusingly similar mark in the same market. However, this priority may not be enforced to prevent the use by any person of an identical or confusingly similar trademark in relation to goods to which that person or his predecessor in title has continuously used from a date prior to the use of the registered trademark in relation to those goods by the proprietor or his predecessor in title, or to object to that person being put on the register for that identical or confusingly similar trademark in respect of those goods in the case of honest concurrent use, or other similar special circumstances.
Also, registration confers on the proprietor of a registered trademark the right to institute proceedings at the relevant court of competent jurisdiction to prevent, or to recover damages for, the infringement of that trademark. The proprietor of an unregistered trademark may only enforce his rights in relation to that unregistered trademark, through a passing off action.
Non-Use of a Registered Trademark
Actual use of a mark is not required before it may be registered under Nigerian law. An intention to use is sufficient. However, a registered trademark may be taken off the register for non-use on either of the following grounds:
• Lack of Bona Fide Intention to Use: If the trademark was registered without any genuine intention to use it in relation to the goods or services for which it was registered, and there has been no bona fide use of the trademark up to one month before the application for cancellation.
• Continuous Non-Use: If the trademark has not been used for a continuous period of five years or more from the date of registration, it can be subject to cancellation.
It is instructive to note however, that registered trademarks are hardly taken off the register for non-use without an order of a court of competent jurisdiction. This may be attributable to the disorganised state of the records at the Registry.
This is an abridged version of the article. You can read the article in full on the authors website.
The Grey Matter Concept is an initiative of the law firm, Banwo & Ighodalo.
DISCLAIMER: This article is only intended to provide general information on the subject matter and does not by itself create a client/attorney relationship between readers and our Law Firm or serve as legal advice. We are available to provide specialist legal advice on the readers specific circumstances when they arise.
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