5 Common Mistakes in Filing Trademark Applications in Nigeria

Trademark Registration
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1. Registering a trademark in the wrong class

One of the most common mistakes in filing trademark applications in Nigeria is choosing the wrong class. There are currently 45 classes for filing trademarks in Nigeria. When registering a mark, it is important to file the application in the proper class because when the Trademarks Registry is deciding on the similarity between two trademarks, it will look at marks within the same class. So when you register in the wrong class, not only do you not have protection for your mark in the proper class, you may not be able to prevent others from using the mark for a different class of goods or services. In addition, your actions will cost you financially — you will need to start over and pay a new application fee should you decide that there is the need to file the application in the proper class. To avoid this mistake, it is often highly recommended that you hire an expert trademark lawyer to identify the right classes for your trademark. A lawyer can also help you clearly describe the goods or services in detail as part of your application.

2. Waiting for a paper version of the Acknowledgement Form for applications filed online

When an application is filed online, the Trademark Registry’s online system generates an Acknowledgement Form. Many clients mistakenly assume that they will receive a paper version of the acknowledgement form. Others assume they can obtain a ‘stamped version’ of the acknowledgement form. This is an incorrect assumption. While the registry will issue a stamped version of the Acceptance Form for applications that are filed through the online filing system, the registry will not do so for Acknowledgement Forms.

3. Failing to search for similar trademarks.

As part of the trademark application process, it is important (although optional) to search for similar trademarks. Searches can be conducted manually at the trademarks registry in Abuja for a fee. It is a good idea to get into the practice of searching for abandoned or canceled trademark registrations, as well as exact or similar trademarks that have already been registered or applied for. Failing to conduct a thorough search can often cost businesses at a later date.

4. Choosing a mark that is generic, not distinctive or descriptive

The trademark you select should be distinctive as required by Section 9 of the Trademarks Act. A trademark application that uses descriptive terms to merely describe a company’s products or services will be rejected by the Trademarks Registry in Nigeria. Likewise, generic terms are ineligible for trademark protection because they refer to a general class of products or services rather than a company’s brand

5. Merging goods or services from one class into another

Although it can be very tempting to list every product or service imaginable on the trademark application, it is important not to merge items from one class of goods or services into another. For example, filing for a trademark in Class 3 (cosmetics) but covering items that belong in Class 5 (for pharmaceuticals). This is simply bad practice and will not guarantee protection for goods in a class different from the category selected for the trademark.

For more information on filing or renewing trademarks in Nigeria, please email trademarks@nlipw.com

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About Ufuoma Akpotaire 258 Articles
Ufuoma is a Senior Editor and Director of Regulatory Policy at NLIPW. She assists clients in the protection of copyrights, trademarks and patents. She counsels clients regarding validity and infringement matters and has experience acting against the infringement of IP and addressing counterfeit issues. She holds a Masters degree (LL.M.) from Columbia Law School, New York and a law degree from the University of Nigeria (LL.B. Honors). She is admitted to practice law in Nigeria and in the State of New York. Ufuoma cut her teeth in the intellectual property practice groups of some of the largest law firms in Nigeria and has years of experience working with major non-profit organizations in New York. Email: uakpotaire@nlipw.com

2 Comments

  1. Thank you for your well written expose. I have learnt some new things. I do however have some observations on the way the trademark Commission goes about its business and I’d appreciate if my concerns are addressed.
    My observation is that the officials at the trademark Registry in Abuja have formed some sort of brickwall(or cabal as we like to say) around the whole process of trademark registration. The process on paper is straight forward but in practice a lawyer cannot really do anything except pay fees(some are in the nature of personal additions by the officials of the Registry) and totally depend on these officials. Why can’t the trademark Commission take a cue from the Corporate Affairs Commission? Both of them are Government institutions for God sake. Unlike the CAC one hardly knows how much it takes to register a trademark. The amount seems to depend on the official one is dealing with. This is not good enough.

  2. Thank you for your comment Oguche. At NLIPW, we have had a slightly different experience working with the Trademarks Registry in Nigeria.You may want to work directly with lawyers in filing your trademark application to avoid this problem.

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