The Trademarks Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment administers protection of Trademarks, Patents and Designs in Nigeria. The relevant legislation governing the registration of trademarks is the Trade Marks Act (enacted in 1965) and the Trade Marks Regulations (enacted in 1967).
- Nigeria, being a party to the Nice Agreement, the International Classification of Goods and Services is followed.
- Foreign Priority cannot be claimed for trademark applications in Nigeria.
- Prior use of a mark is not a requirement for filing.
- There are currently two platforms for filing trademark applications namely the MANUAL and ONLINE filing systems.
- Only accredited trademark attorneys/agents/individuals/companies can attend to the registration of trademarks on behalf of trademark applicants.
- A trade mark is registerable in black and white or in colour. However, a trade mark registered in colour has protection limited to the colour(s) registered, while trademarks filed in black and white have protection afforded to all colours of presentation of the trademark.
- Multiclass filing is not recognized in Nigeria and a separate application is filed for each classification of goods and services for which the trade mark is to be registered.
- Notarization or Consular Legalization of documents is not required.
The procedure for trademark registration can be summarized in the following stages:
1. Availability/Clearance Stage: The local Attorney/Agent receives an instruction to conduct a clearance search to determine the availability of the proposed mark for registration. (This stage is optional).
2. Application Filing Stage: The local Attorney/Agent receives instruction to file trademark application and process its registration at the local Registry of Trade Marks, Patents and Designs. To this end, a Power of Attorney form authorizing the Agent to act for the Trademark Applicant is executed and completed in favour of the Attorney. This allows Attorney to file application(s) and to deal with any matter connected to the concerned trademark(s) at the Trademarks Registry and to receive all official documents on behalf of the Trademark Applicant.
-Upon filing the application, an official Letter of Acknowledgment bearing the official application number and filing date of the application is generated immediately from the TM Registry’s portal, if an online application; but where a manual application, it takes days or weeks for the TM Registry to issue the same.
-A preliminary search is conducted by the Trademarks Registry to ascertain distinctiveness of the proposed mark from prior filed and registered marks. If mark is found acceptable for registration, the Registrar issues a notification of acceptance. At which stage some protection avails the mark against later applications for identical or similar marks.
3. Publication Stage: publication/advertisement of a trademark application in the Trademarks Journal is a ‘condition precedent’ to the registration of a trademark. Usually what protracts the registration period to years is the delay to publish applications in the Trademarks Journals, without which application cannot proceed to the final stage. Infrastructure problems and budget deficiencies faced by the PTO had resulted in infrequent releases of Trademark Journals by the PTO. However, from November 2017, in an unprecedented manner, there have been multiple releases of the Journal significantly clearing the backlog of applications awaiting publication. Once an application is advertized in the Trademarks Journal, there is a statutory period of two months from the date of the publication within which oppositions can be filed against the registration of the trademark.
4. Certification Stage: Once an application scales the ‘publication hurdle’ without any opposition received within the statutory period for oppositions, or the opposition is decided in favour of the Applicant or is withdrawn, the local Attorney applies for the Certificate of Registration. Upon the registration of the trademark, the Registrar issues to the Applicant, a Certificate of Registration bearing the Registered Trademark No. and the date of filing. A trademark is registered as of the date of the application for registration (filing date) and that date is deemed to be the date of registration. The Certificate of Registration will show that the registration is valid for an initial period of seven (7) years and is renewable indefinitely for periods of fourteen (14) years.
Trademark protection involves and requires much more than registering a trademark. It is a multistep process and the Trademark Proprietor must adopt an all-encompassing IP protection strategy. The following measures form part of the said IP protection strategy:
1. TIMELY RENEWAL OF REGISTRATION AND USE OF TRADEMARK
Trademark proprietors would be well advised to ensure the timely renewal of their portfolio by their local trademark agent to protect marks from becoming vulnerable to poaching on the basis that they had ceased to subsist legally on the register. If the mark is locally registered but renewed and not up to date on the Trademarks Register, cancellation proceedings may be initiated to remove the mark and clear the way for the new applicant.
Under the Trademarks Act, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on an application made by any person concerned, where one month before the date of the application, a continuous period of five years or longer has lapsed during which the trade mark became registered and during which there was no bona fide use of the registered mark.
While use is not a requirement for registration or renewal of registration, it may become an essential element to protect a registered trademark in a cancellation proceedings on grounds of non-use.
2. ENFORCEMENT OF RIGHTS
Administrative remedies and Litigation
The initial forum available for settlement of trademark disputes is the PTO Opposition and Administrative Hearing Panel. Majority of trademark dispute matters in Nigeria are resolved at this level.
PTO proceedings is a more attractive remedy for Trademark Proprietors for the following reasons:
- Disputes resolved at the level of PTO administrative hearings are cheaper than court litigation in terms of legal fees and costs, and are concluded within 6 months to 2 years. In contrast, once a trademark dispute proceeds to court, the process could take 3 to 10 years to conclude if it proceeds to appeal stage. Correspondingly, court litigation process is a much more expensive option.
- The PTO is better acquainted than the courts with the relevant PTO procedures, so its rulings are more reasoned in accordance with the applicable legal and regulatory regime for intellectual property. Therefore, evidence adduced and accepted at PTO proceedings also serves as a guide in subsequent court litigation.
- Importantly, affidavit evidence provided to the PTO by way of statutory declarations, upon which the PTO bases its ruling, are admissible as evidence in subsequent court litigation on the same subject. At the PTO level, evidence adduced by statutory declaration is based on factual expositions, without putting the deponent on the witness stand.
However, the Federal High Court is the primary dispute forum for proprietors of registered trademarks to institute actions for ‘infringement’ and ‘passing off’. In Nigeria, there is a paucity of IP litigation case law precedents largely due to the fact that most trademark disputes are resolved at the PTO level. Albeit, adequate legal manpower resources are locally available to argue IP cases and British case law precedents are readily admissible because Nigerian IP laws are based on British laws.
Appeals may proceed to the Court of Appeal and ultimately the Supreme Court.
3. DUE DILIGENCE
Trademarks Portfolio Maintenance
In meeting clients’ needs to protect and maintain their intellectual property rights, IP lawyers must have effective and efficient docket records and generally keep those records intact. This is because the data preservation and filing systems at the local PTO have their imperfections. As a result, files may not be readily located or accessible to process requests for search, recording of changes, assignments and renewals etc. Therefore, the IP agent cannot rely entirely on the PTO but must keep a ‘parallel registry’ as he may have to assist the PTO with docket-record copies of documents.
When a file cannot be located, the remedial practice is to apply for the creation of a temporary file (until the original file is found), which will necessitate providing the Registry with copies of the agent’s own docket-record copies of documents, such as filing receipt, acceptance letter, certificates of registration and renewal etc. Hence, IP practitioners managing large portfolios of trademarks have compelling reason to procure software designed to aid their docketmaintenance records.
Towards this aspect of trademark maintenance, trademark proprietors also play a vital role in helping and equipping their lawyers. This is especially so in opposition and cancellation proceedings where the element of ‘use’ of the trademark in the territory may need to be proven. Records of previous sales, shipments or imports of the branded products to the territory, advert and marketing materials (including virtual ones designed specifically for the African market) and amounts expended on such advertisements would need to be produced as evidence. Where these have been diligently preserved in trademark proprietors’ archives, it makes it easier for the IP lawyer to organize his arguments and support the same with documentary evidence.
Trademarks Watch Service
To ensure that trademark disputes are resolved at the PTO level thus ‘nipping the problem in the bud’ at an early stage and to avoid costly legal expenses associated with litigation, many trademark proprietors now retain ‘watch service’ over their trademarks. This is a proactive measure. The Trademark Watch service alerts the trademark proprietor to any attempt by third parties to register marks that are similar or identical to his. Such conflicting trademarks are detected in the current Trademarks Journal and allows the trademark proprietor to oppose the conflicting trademark before the ‘window of opportunity’ (i.e. the 2 months statutory period for oppositions) closes and the conflicting trademark proceeds to registration. Once a conflicting trademark is allowed to proceed to registration without opposition, administrative remedies through the PTO become exhausted and recourse must be had to the Courts; also, the legal right to institute court action against an offender for infringement is only available to the proprietor of a registered trademark.
Discoveries and assessments of legal merits
Before getting involved in a wrangle, the IP client would be well advised to seek local counsel as to the merits of and prospects for their case, and evaluate the available data to support claims of a superior title. Due to the protracted nature of the process in Nigeria, court litigation may be an expensive option, unworthy of prosecution, if case prognosis gives less than a fifty-fifty chance of success on initial assessment.
FLOW-CHART FOR TRADE MARK REGISTRATION AND DISPUTES FORUM