The law, practice and procedure for the registration and regulation of trademark in Nigeria are governed by the Trade Marks Act, Chapter T13, Laws of the Federation of Nigeria 2004, and the Merchandise Marks Act Chapter M10 Laws of the Federation of Nigeria 2004. Section 67 (1) Of the Trade Marks Act defines trademark thus:
"trademark" means, except in relation to a certification trademark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trademark, a mark registered or deemed to have been registered under section 43 of this Act;
Section 43 (1) of the Trade Marks Act also provides:
"A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, method of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trademark in Part A or the register in respect of those goods in the name, as proprietor thereof, of that person:
Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified."
Trademark can thus be defined as word(s), symbol, labels, numerical, signature or device legally registered or established by use as representing a company or product and distinguishing the source of goods from one party or company to those of others in the same line of business.
The regulatory body in charge of trademark in Nigeria is the Ministry of Trade and Investment. The Nigerian Trade Marks, Patents and Designs Registry, under the Commercial Department of the Ministry of Trade and Investment, is the authority responsible for trademark applications in Nigeria.
There are benefits which accrue to the registering of trademark in Nigeria, which includes the protection of one's trademark by the registry, discouragement of others from using similar marks without one's license, notification of the general public of one's ownership of the mark etc. An application for the registration of trademark is made to the Registrar/Registry; however, such application can be opposed by any member of the public.
TRADEMARK APPLICATIONS IN NIGERIA
Section 1 of the Trade Marks Act provides for the office of the Registrar of Trademark, who is responsible for all activities carried out in intellectual properties from the trademark, patent and design. The Registrar also has the duty to keep a record called the register of trademarks, in which all registered trademarks shall be entered, with the names and addresses of their proprietors, the date on which registration for their applications were made, notifications of assignments and transmissions, the names and addresses of all registered users and such other matters relating to registered trademarks. The register is also to be divided into two parts – Part A and Part B, respectively. While registration under Part A relates to inherently distinctive marks, registrations under Part B are available for marks which are capable of being distinctive. The following details are required for the registration of a trademark in Nigeria
- Details of the applicant/proprietor – including name, nationality,
- Prints or a representation of the proposed trademark.
- Class and specification of goods or services for which the trademark is to be registered.
- Authorisation of Agent (Power of Attorney) signed by the applicant and where the applicant is a body corporate, by an officer duly authorized to do so. No legislation or notarization of this document is required.
For a trademark to be registered, first it has to be ascertained that it is registrable under Sections 9 to 15 of the Trade Marks Act. Section 9 (1) of the Trade Marks Act provides that in order for a trademark to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:
- 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:
Provided that a name, signature or word or words other than such as fall within paragraphs (a) to (d) of this section, shall not be registrable under paragraph (e) of this section, except upon evidence of its distinctiveness.
Section 10 (1) of the Trade Marks Act further provides that in order for a trademark to be registrable in Part B of the register, it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor or the trademark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
Failure to comply with any of these requirements in Sections 9 and 10 of the Trade Marks Act constitute grounds for refusal of the trademark application. Other grounds for refusal of registration under the Act (Sections 11-15) are:
- that the mark is deceptive or scandalous, contrary to law or morality;
- An absolute grounds objection can be overcome by making representations, either oral or written to the Registrar, or by amending the proposed trademark application, where applicable;
- that the mark contains a word which is commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture in respect of a chemical substance or preparation;
- that the mark contains some prohibited words and/symbols such as the names of chemical substances, Coat of Arms, the words "patent", "patented", "registered", "registered design", "copyright", or words to the like effect, and so on.
It is therefore important that searches are conducted to ascertain the availability of a trademark before an application for registration is made. The registration process commences by the filing of trademark application. This application can be filed manually through the Industrial Property Administration System (IPAS) or online. Upon filling, the Registry will issue an Acknowledgement Notice which indicates that the trademark has been successfully filed and the date of filing. A temporary number is also allocated to the trademark, pending the registration and allocation of a permanent registration number.
After the issuance of the Acknowledgment of Notice by the Registry, the trademark application is then published/advertised in the trademark journal to allow opposition from any member of the public and is open to opposition for a period of two (2) months from the date of publication/advertisement. See Section 20 of the Trade Marks Act. Where the trademark application is not opposed, the application becomes successful and thus proceeds to registration.
Trademark opposition occurs when a proposed trademark, which is to be registered, is published/advertised in the Trademark Journal and such application is opposed by any person within the two (2) months of publication, by filing a Notice of Opposition in writing, on any of the grounds specified in the Act. The Notice shall also include Statement of the grounds of opposition. It should be noted that the two (2) month timeline set is definite and cannot be extended.
Procedures involved in Opposition of Trademark Proceeding
Once a Notice of Opposition is filed, the Registry is prevented from proceeding with the registration of the mark in question until a decision is made. At an opposition proceeding, a party who files a Notice of Opposition is referred to as the Opponent while the Proprietor of the trademark is the Applicant. Evidence is by filing of relevant documents.
Upon serving the Applicant the Notice of Opposition, the Applicant is expected to file a Counter-Statement in response to the Notice of Opposition within one (1) month of the receipt of the Notice of Opposition, which is definite and non-extendable. – See Section 20 (3) of the Trade Marks Act.
Where the Applicant fails to file a Counter-Statement, the Opponent can apply for the said trademark to be deemed abandoned, which brings an end to the opposition proceeding and the registration of the mark. – See Section 20 (3) of the Trade Marks Act. Where the application deemed abandoned, the Registry then issues a Notice of Abandonment, which in effect means that the Registry cannot proceed with the registration of the trademark.
However, where the Applicant files a Counter-Statement, the Opponent shall file evidence by way of Statutory Declaration in which the Opponent makes averments on the reasons why the trademark should not proceed to registration and may further furnish documents to support the claim. This Evidence by way of Statutory Declaration is to be filed one (1) month of the receipt of the Counter-Statement. However, this one (1) month duration is extendable upon application and grant of extension of time by the Trademark Register.
The Applicant, upon receipt of the Opponent's Statutory Declaration, is also required to file its evidence by way of Statutory Declaration within one (1) month of receipt of the Opponent's Statutory Declaration. An extension of time can also be obtained.
The Opponent also has the right to reply the Applicant's Statutory Declaration within one (1) month, and where the Applicant needs to respond to the Reply Statutory Declaration, the Applicant can file further evidence in response, with the leave of the Trademark Registrar. When all relevant documents have been filed, the Registrar then gives notice to the parties of a date when he will hear arguments in respect of the case.
At the close of the case, Briefs of Argument are filed by both the Opponent and the Applicant, and parties adopt their Briefs of Argument as their respective arguments in support of their case. The Trademark Tribunal then delivers a Ruling after the adoption of the Briefs of Argument. However, the decision of the Trademark Tribunal is subject to appeal, where a party is dissatisfied with the Ruling of the Trademark Tribunal.
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.