A trademark refers to a phrase, word, mark or other symbol that distinguishes a particular product from others and helps to legally protect it from other similar products. A Mark may include a device, brand, heading, label, ticket, name, logo, signature, word, letter, colour, shape, numeral, slogan, domain name or a combination of these marks. A trademark essentially recognizes a company or individual's legal ownership over a particular brand.
The Trademarks, Patents and Designs Registry is located in the Commercial Law Department of the Ministry of Industry, Trade and Investments.
Trademarks are registered in classes and a trademark class provides information on the type of goods or services that the mark represents. Trademark classes range from 1 - 45. Classes 1 - 34 are with respect to goods, whilst classes 35-45 are with respect to services.
A Mark may be registered either plainly (black and white) or in colour. However, where it is registered in colour, the protection afforded the Mark is limited to the colour(s) registered. On the other hand, a plain (black and white) registration affords protection to all colours of presentation of the trade mark.
The Registrar of Trademarks may request that for distinctiveness and acceptability for registration, word marks that are common English words should be registered in combination with devices or logos.
Procedure for the registration of a Trademark in Nigeria
Registration of a Trademark in Nigeria involves four (4) major steps:
- Conduct an availability search on the mark: This is carried out on the online portal of the Trademarks Registry to confirm the availability or otherwise of the mark prior to an application for the registration of the trademark. It is also advisable to request a manual search at the Registry to ensure that a conclusive search has been carried out. Search results are obtained between three (3) to five (5) working days.
- Submit relevant documents to the Trademarks
Registry: Where a trademark is available, an applicant is
required to submit the following information and statutory
- The product to be registered (name, logo, slogan, domain name, shape, colour or sound) and specimen of the mark in jpeg format;
- Name, address, phone number and email address of the Applicant. Where the Applicant is a company, the certificate of incorporation is required;
- The class/classes the mark will be registered under, the classes may be found at (https://nlipw.com/trademarks-search/);
- Name and address of the agent for the registration.
- Publication in the Nigerian Trademarks Journal: The Trademarks Registry is required to notify the public of all applications for registration by publishing same in the Nigerian Trademarks Journal every three (3) months. This allows members of the general public an opportunity to oppose the registration of the trademark. An opposition to the registration of a trademark may be brought within a two (2) month period. However, the date of publication is at the discretion of the Trademarks Registry.
- Application for Certificate: If no opposition is filed challenging the application for registration within the two (2) month statutory period prescribed for submitting a challenge, an application for issuance of a certificate of registration in respect of the trademark may be made to the Registry. Issuance of the certificate takes about four (4) – eight (8) weeks.
A registered trademark is valid for an initial period of seven (7) years and may be renewed indefinitely for further periods of fourteen (14) years. An application for renewal should be made not less than three (3) months from the due date.
Where there is any opposition to an application for the registration of the trademark after it must have been published, the applicant will be allowed to defend the opposition. Where the applicant does not defend the opposition, the applicant will be deemed to have abandoned the application.
Importance of registration
- Secures ownership of a mark: Registration confers on the owner of a trademark a right to bring legal action to protect the trademark from infringement. It helps prevent a third party such as a competitor from registering a similar mark. By virtue of the provisions of the Trade Marks Act, Chapter T13, Laws of the Federation of Nigeria 2004 (the "Trademarks Act"), the owner of a registered trademark may file an action before a Federal High Court for infringement of the mark. The owner of an unregistered mark will be entitled to bring an action under the common law principle of passing-off.
- Creates a unique market for a product: Registration ensures that a product is easily identifiable in the market, especially where there are other products of a similar kind. An easily identifiable product becomes more valuable to consumers and investors, the longer it stays in the market. Consumers become more attached to a product where the brand is recognized because of its consistency and value.
- Creates income for the brand: A trademark may be bought, sold or licensed and the owner of the mark can demand royalties for its exploitation. A royalty is a payment that a person makes to another for the right to make use of other's asset. A registered owner of a mark for a particular product, may license another company to sell goods or services under the mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.