Trade & Service Mark
Nigeria is a party to the Madrid Agreement on International Registration of Trademarks and the Nice Agreement on the International Classification of Goods and Services. The laws governing trademark administration and the enforcement of it accruing rights in Nigeria are contained in Cap 436 of the Trade Marks Act (TMA) 1965, and Trade Marks Regulations of 1967 (both provisions have been revised in the Laws of the Federation of Nigeria 1990.
The criminal aspects of some of the issues relating to the breach of trademark rights are codified in the Merchandise Marks Act, Cap.223 Laws of the Federation of Nigeria. Civil issues relating to the beach of trade mark rights in Nigeria are exclusively handled by superior courts in Nigeria. Previously, the general opinion was that the provisions of Section 7(1) c) (ii) of the Federal High Court Act, Cap. 134 Laws of the Federation of Nigeria, 1990 conferred exclusive jurisdiction on the Federal High Court to entertain actions in respect of civil matters “arising from” any enactment relating to trade marks, however, the decisions of the Supreme Court in PATKUM INDUSTRIES LTD. V. NIGER SHOES MANUFACTURE LTD (1985) 5 NWLR (pt. 93) 138 and AYMAN ENTERPRISES LIMITED V. AKUMA INDUSTRIES LIMITED (SC 116/199) holds the view that where any passing off action that does not arise from a registered trademark (infringement of a Federal enactment) is a common law right of which the State high Courts and not the Federal High Court has jurisdiction to entertain.
Under Section 66 of the TMA, a mark is defined as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof. Any person claiming to be the proprietor of a trade mark used or proposed to be used can apply for the registration of a trademark. Use is not a requirement for registration of a trade mark in Nigeria, provided that a registered trademark may be taken off the register in respect of any of the goods in respect of which it is registered on the grounds that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has in fact been no bona fide use of the trademark in relation to those goods by any proprietor thereof for the time being up to the date one month before the date of the application, or
That up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trademark was a registered trademark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being.
Procedure and requirements for registration:
An application can be filed by the applicant or his local agent. Where the applicant chooses to file the application directly, he must provide an address for service within Nigeria. It is advisable that searches be conducted to determine the availability of a trade mark before any application for registration is made. The application form must contain the following details:
a. Name and address of the applicant;
b. List of goods for which the application is sought;
c. Nature of business of the applicant;
d. Representations of the mark sought to be registered;
e. An Authorisation of Agent (Power of Attorney) signed by the applicant and where the applicant is a body corporate, by an officer duly authorised to do so. No legalisation or notarisation of this document is required.
A representation of the proposed trade mark must be affixed to the form accompanied with 20 additional representations of the trademark, and the official filing fee. An application containing a word or words other than in English language shall be endorsed with an exact translation thereof. Convention application(s) must be filed within six months of the date of the home application.
On receiving the application, the Registrar will issue an acknowledgement form to the applicant. The acknowledgement form will contain the trade mark application number (which will be changed when the application is registered) and the date the application was filed. After issuing the acknowledgement form, the application will be subjected to an examination strictly as to it distinctiveness.
Thereafter, the Examiner may object to the registration of the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any as he may deem fit. If the Examiner objects, he shall inform the applicant of his objection in writing and unless within two months from the date of receipt of the Examiner’s letter, the applicant applies for a hearing or makes a considered reply in writing to those objections, he shall be deemed to have withdrawn or abandoned his application. In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to appeal to the court.
If the Examiner does not object to the application, he will accept the mark and issue the applicant with a Notification of Acceptance. Thereafter, Registrar shall cause notice of the application as accepted to be published in the Trade Marks Journal. (In some instances the Registrar shall cause notice of the application for Registration of a trade mark to be published in the Trade Marks Journal before acceptance).
Any person may within two months from the date of publication of the application in the Trade Marks Journal give notice to the Registrar of opposition to the registration. Numerous case law decisions have held that on a strict `interpretation of Section 20(3) of the Trade Marks Act, the Registrar has no discretion to extend the period within which to file either the Notice of opposition or a reply by way of a Counter- Statement.
If no objection to the registration is recorded within the specified time, the Registrar is authorised to issue the Certificate of Registration. The initial registration is valid for 7 years and the encircled letter ® may be used to indicate a registered trademark.
Trade mark renewal:
The Trade Marks Act provides that on application made in the prescribed manner and within the prescribed period, the Registrar shall renew the registration of a trademark for a period of fourteen years from the date of expiration of the original registration or of the last renewal of registration. Late renewal is permitted upon payment of a penalty fee.
If a new Agent other than the Agent that applied for registration is being instructed to renew a mark, an Authorisation of Agent (Power of Attorney) will be required to enable the new Agent process the application. In all cases, the authorisation requires no legalisation or notarisation.
Trade mark assignment:
A registered trademark is assignable and transmissible either in connection with the goodwill of a business or not. It is also assignable and transmissible in respect either of all the goods in respect of which it is registered or was registered, as the case may be, or of some of those goods. Similarly, an unregistered trademark is assignable and transmissible if at the time of the transmission, it is used in the same business as a registered trademark; and is assigned or transmitted at the same time and to the same person as that registered trademark.
Unless an assignment is recorded at the Trademark Registry, a transferees` statutory right to commence an action for infringement will not be recognised by the courts. However, the common law right to institute a passing-off action avails the transferee. An application for assignment must be accompanied with the following: