May 22, 2016 — On March 31, 2016, the Trademark Registry in Nigeria published a new Trademarks Journal, Trademarks Journal Vol. 1 No. 1. With only eight days (8) left, now is a good time to flip through the Journal, identify conflicting or similar marks, notify your clients, and with their consent, file a Notice of Opposition.
An opposition cannot be commenced until after the Trademarks Registry in Abuja advertises the application in the Trademarks Journal. As soon as this is done, there is a two-month period within which you can file a Notice of Opposition on behalf of your client. For the recent Journal dated March 31, 2016, the deadline will be May 31, 2016.
To commence an opposition, you must:Prepare a statement of opposition, having regard to Form 6: Statement of Opposition to an Application for Registration of a Trademark. You must also list the only grounds with sufficient details, on which an application may be opposed.
You must also prepare a cover letter setting out the details of the trademark application being opposed and the method by which the prescribed fee is being paid. A sample letter is provided below.
Trade Marks Registry
Federal Ministry of Commerce, Garki, Abuja.
Re: In the Matter of an Application [Insert Application Number] “[Trademark Name]” in the name of [Insert Applicant Name]
We act as Counsel to [Insert Your Client’s Name and Address], the Opponent to the above-captioned trade mark application.
Kindly acknowledge receipt of the following enclosures:
1. Notice of Opposition – Form 6 (2 copies)
2. The statutory fees.
[Insert Your Name and Law Firm Name]
The Registry does not currently advertise published marks online as such you may not be aware (unless you have a legal counsel on retainer or are subscribe to a trademark watching service) that a mark that is likely to cause confusion or similar to yours, has been published in the Trademarks Journal.
Relevant Provision of Trademark Regulation: Opposition to applications under section 43.
The Registrar may require any person giving notice of opposition or any applicant sending a counter-statement after receipt of a copy of such notice to give security, in such form as the Registrar may deem sufficient, for the costs of the proceedings before the Registrar, for such amount as the Registrar may deem fit, and at any stage in the opposition proceeding may require further security to be given at any time before giving his decision in the case
In the event of an opposition being uncontested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.
Within one month from the date of any advertisement in the Journal of an application for the registration of a certification trade mark, any person may give notice to the Registrar on Form 6 of opposition under sub-paragraph (1) of paragraph 2 of the First Schedule of the Act and regulations 49 and 59 of these Regulations shall apply to the proceedings thereon; and any person may give notice to the appropriate authority on Form 37 of opposition under subparagraph (2) of paragraph 2 of the said the First Schedule and regulations 49 to 59 of these Regulations shall apply with the necessary modifications to the proceedings thereon, with substitution of Form 38 for Form 7 and of Form 39 for Form 8 and in any case of doubt any party may apply to the Registrar or the appropriate authority, as the case may be for directions.
This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances