Introduction
Trademarks are important identifiers made up of words or design components that represent the origin, ownership, and development of products or services. They have substantial business significance since they provide legal protection for the exclusive use of marks, names, design elements, logos, silhouettes, and other identifiers created or employed by authors to differentiate their products and services.
“On an international scale, trademarks provide global protection and the promotion of international corporate expansion.”
Trademark laws not only protect legal rights, but they also foster the creation of valuable assets that may appreciate over time, add to the valuation of the business or brand, and be employed as collateral for accessing some funding. On an international scale, trademarks provide global protection and the promotion of international corporate expansion.
The Madrid Agreement on the International Registration of Marks (“The Madrid Protocol”)
The Madrid System, governed by the Madrid Agreement (1891) and the Madrid Protocol (1989), simplifies international trademark registration. Administered by the World Intellectual Property Organisation (WIPO), this system allows trademark owners to extend protection to over 100 countries with a single application. The primary goal is to streamline the process, eliminating the need for separate country-by-country applications. Through the Madrid System, trademark owners can efficiently secure protection in multiple countries, saving time and resources.
Article 4 of the Protocol Relating to the Madrid Agreement Concerning International Trademark Registration stipulates that a trademark registration shall have effect in all contracting states as if the registration was directly deposited in each country. Specifically, Articles 3, 4, 5, and 6 of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks outline the registration process for international trademarks.
The registered mark is protected for a period of ten (10) years from the date of registration, which is renewable for another period of ten (10) years.
Read also: Revocation of trademarks in Nigeria: Non-use as a key consideration
Becoming a contracting state:
Membership in the WIPO is open to countries that meet the specific requirements. Countries that are parties to international agreements aimed at protecting intellectual property, such as the Paris Convention for the Protection of Industrial Property (“Paris Union”) and the Berne Convention for the Protection of Literary and Artistic Works (“Berne Union”), are open to join WIPO. A state that is a party of the United Nations or one of its specialised agencies, such as the United Nations Educational, Scientific, and Cultural Organisation (“UNESCO”), is welcome to be a party member of WIPO. Furthermore, the WIPO General Assembly can invite any state member to become a party to the WIPO Convention, opening up membership to a wider range of countries.
Nigeria and the Madrid Protocol:
It is noteworthy to state that WIPO has 193 member states, but only 108 countries have signed the Madrid Protocol, which is approximately 56 percent of WIPO’s membership. Unfortunately, Nigeria is one of the countries that has not adopted the Madrid Protocol, which means that Nigerian businesses and individuals must file separate trademark applications in each country where they seek protection, which is a cumbersome and costly process. Contrarily, many African countries have recognised the benefits of the Madrid System and have signed the protocol, including Ghana, Zambia, Zimbabwe, Egypt, Morocco, Tunisia, and others.
As Nigeria is currently not a party to the Madrid Protocol, its citizens face challenges in protecting their trademarks globally. To increase the ease of doing business, attract foreign direct investment in the country, and create an enabling environment for global assurances of protection of intellectual property rights from Nigeria, it is imperative that the Nigerian government:
- very urgently accedes to and ratifies the Madrid Protocol by depositing its instrument of accession and ratification with the World Intellectual Property Organisation (WIPO), formalising its membership in the Madrid System;
- enacts domestic legislation to implement the Madrid Protocol, aligning its trademark laws with international standards;
- establishes regulations and procedures for trademark registration and protection incorporating the Madrid System process and requirements;
- once the above is completed, raise awareness among businesses, individuals, and relevant authorities about its status with the Madrid System to encourage and assure them of global protection of their unique identifiers in a cost-effective, bankable, and pragmatic manner; and
- ensures its trademark office is equipped to handle international trademark registrations and related matters.
By taking these steps, Nigeria can join the Madrid Protocol, thereby simplifying trademark registration and protection for its citizens and promoting economic growth and global competitiveness.
Conclusion
Being a member of the Madrid Protocol is essential for international trademark registration, as it saves time and money compared to individual country-by-country registration. By signing or becoming a party to the Madrid Protocol, the Nigerian government will assist its citizens in expanding their businesses globally while safeguarding their intellectual property. Prioritising this issue while taking the necessary steps will make trademark registration more accessible and efficient for Nigeria’s commercial landscape.
Ms Abiola Olanrewaju Esq; Associate and Practice Manager, RBMM Solicitors, Media Entertainment and Corporate Commercial Attorneys, Lagos, Nigeria.
