2.1 What are registered trade marks?
A trade mark is a means of identifying the origin of the goods and services in question. It is a sign used in relation to goods or services for the purpose of indicating a connection in the course of trade between goods and services and the user of the mark. The right granted by such registration is the exclusive right to use the mark in Nigeria in relation to the goods for which it is registered. Applications for registration are made by authorised agents, usually legal practitioners, on behalf of the owners of the mark in question.
2.2 Applicable law
Trade mark protection is largely governed by the Trade Marks Act 1965 and the Trade Marks Regulations 1967. The Merchandise Marks Act 1956 creates criminal offences and imposes penalties on trade mark counterfeiters while the Trade Malpractices (Miscellaneous Offences) Decree 1992 also addresses the issue of trade mark infringement by imposing criminal sanctions on offenders.
It should be noted that the international classification of goods applies to the Nigerian trade marks Register. This classification of goods is listed in Schedule IV of the Trade Marks Regulations 1967.
2.3 What marks may be registered?
In order to be capable of registration the mark must be a "mark" within the meaning of the 1965 Act. This includes a name, signature, word, label, number, brand, heading, letter or device or any combination of these.
Secondly, the mark must be distinctive, non descriptive and non deceptive as to origin or quality of the goods. Thus marks which are too similar to existing registrations in respect of the same goods will be rejected except where the two marks have previously been used honestly and concurrently. All registered trade marks and related matters such as the names and addresses of proprietors, registered users, notifications of assignments, transmissions etc. are recorded in the Register of trade marks which is open to public inspection.
The trade marks Register is divided into parts A and B. Part A marks are those which the Registry considers as being inherently distinctive such as to distinguish the proprietor's goods from others. Part B marks are those which the Registry considers as being merely capable of distinguishing the proprietor's goods from those of others and attract a lesser form of protection. It is possible to request for the Registrar's preliminary advice on whether the mark is registrable under part A or B (Form 30). This advice though not binding on the Registrar is valid for 3 months. A trade mark may be registered in part B notwithstanding any registration in part A.
2.4 Procedure for registration
Before application for registration is made, a preliminary search for the trade mark at the Registry must first be conducted so as to confirm the availability of the proposed mark. This is done by filling out a Search Form stating the name of the mark, the class to be searched and inserting a specimen of the mark. The search fee is =N=100.00. Thereafter a search of the Register is conducted. If nothing similar is found this means the mark may be available.
The next step is for the applicant or his agent to apply for registration by doing the following:-
(i) Filing the application for registration of a trade mark (Form 2), a bromide of the mark should be pasted on top of the application;
(ii) Where application is made by an agent filing the "Authorisation of Agent "Form (Form 1) appointing the legal practitioner agent of the owner of the mark;
(iii) Filing a set of four forms (Form 3) which is for additional representation of the trade mark to accompany the registration application;
(iv) Paying the prescribed filing fee, =N=1,000.00
An acknowledgement form is issued on receipt of the application. The Registrar will examine the application for registrability and cause an official search to be conducted for similarity with any existing registered trade mark or with any pending applications. The Registrar will also ensure that the mark is not deceptive or scandalous and is not in any other way disallowed.
Refusal or conditional acceptance of the application is in writing. In this case the applicant should apply within 2 months for a hearing or reply to an objection in writing otherwise the application is considered withdrawn. If the Registrar makes an adverse decision, an applicant may appeal to the Federal High Court.
If the registration application is accepted, a letter of acceptance will be issued within 4 weeks of the application and the applicant can now use the mark.
The proposed trade mark is now deposited in the Advertising Room for eventual publication in the Trade Mark Journal. Any person can give notice to the Registrar of opposition to registration within 2 months of publication in the Journal (Form 6).
If an objection is lodged the Registrar sends a copy of the Notice of Opposition to the applicant who is given one month to send in a counter-statement (Form 7) or else the application is deemed abandoned. The Registrar will make a final decision on the opposed application. An appeal can be made to the Federal High Court against the Registrar's decision. If no opposition is made and the Registrar decides in favour of the applicant, the Registrar enters the trade mark on the Register either in part A or B. The Registration Certificate is issued on payment of a fee of =N=1000.00
An area of concern regarding trade marks registration is the infrequent publication of the Trade Marks Journal. Whilst the Registrar may "Acknowledge" and issue letters of acceptance in respect of trade mark applications within 4 weeks, a certificate of registration cannot be issued until the mark has been published in the Journal and the applicant's proprietorship unopposed. Ideally the Journal should be published monthly but currently publication is done fitfully and in recent years publication has been done annually if at all. As a result there is a huge backlog of pending applications so that trade mark registration may take anything from 18 months to 5 years to be perfected.
Trade marks when registered are valid for an initial period of 7 years. Subsequently, on application (Form 12) registration is renewed for a period of 14 years after the expiration of the last registration. Upon payment of the renewal fee of =N= 2,000.00 a renewal certificate is issued. A trademark registration will be cancelled if it is discovered that the trade mark was registered without any intended use and there has actually been no bonafide use of the trademark up to a period of one month before the date of an application for cancellation. Registration can also be cancelled if the trademark is not used for a continous period of five years and one month up to the date of the application for cancellation.
2.6 Convention countries
Nigeria acceded to the Paris Convention for the Protection of Intellectual Property and as such is classed as a convention country. A person who files for protection of a trade mark in a convention country can within 6 months of such application apply for registration of his trade mark in Nigeria and shall have priority over other applicants. Under the Convention the first filing date abroad is taken as the effective filing date in Nigeria.
Infringement occurs where a person who is not a registered user, uses a mark identical to or so nearly resembling the mark that it is likely to deceive or cause confusion in the course of trade in relation to the goods in respect of which the mark is registered. Notice of registration is determined by the use of the words "Registered Trade Mark" or abbreviation ( "Regd. Tm").
2.8 Civil remedies
Registered trade marks are enforced by taking infringement proceedings in the Federal High Court.
The court has power to grant any or all of the following reliefs:-
(a) an injunction restraining further infringements;
(b) an order for the delivery up of infringing articles or for the destruction of those articles commonly known as an Anton Pillar Order;
(c) an order for damages for loss of profits or alternatively an account of profits.
The common law remedy of "passing off" is available to proprietors whose trade marks are in the process of registration.
2.9 Criminal sanctions - counterfeit goods
Criminal sanctions are imposed for dealing in counterfeit trade marked goods by the Merchandise Marks Act 1956, the Trade Malpractices (Miscellaneous Offences) Act 1992 and the Counterfeit and Fake Drugs Act 1989. Upon conviction, the infringer is liable to a fine and in the case of Merchandise Marks Act to a term of imprisonment. Assistance can also be provided to the proprietor by the Standards Organisation of Nigeria (SON) in enforcement proceedings initiated against counterfeiters.
UNREGISTERED TRADE MARKS
2.10 What are unregistered marks?
An unregistered trade mark is any sign indicating a connection in the course of trade between goods or services and the person entitled to use the mark but which has not been registered. This may either be because the mark is inherently incapable of registration under the Trade Marks Act 1965 or because its user has decided, for whatever reason, not to register it. An unregistered mark may also consist of the get-up or style of a business. The unregistered mark is a property right closely identified with the goodwill of the business and lasts so long as the goodwill of the business with which it is associated exists. The goodwill of a business is the attractive force which brings in customers and if there is insufficient goodwill the unregistered trade mark cannot be protected.
2.11 Enforcement - the "Passing Off" action
Unregistered marks are protected by the common law cause of action called "passing off". This is an action taken by the owner of the goodwill in a business to prevent another trader from attempting to use that owner's name or get-up in order to pass-off his products or services as those of the owner.
In order to succeed in a passing off action, the plaintiff must show that he has a reputation which is closely associated with a given name or get-up, that the defendant by adopting that name or get-up (or one confusingly similar to it) will or has caused confusion in the market-place and that this has led to actual damage to the business or to the goodwill of the plaintiff or will probably do so unless restrained. These are all questions of fact and degree to be decided on the evidence.
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