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 firstname.lastname@example.org