Before a trademark can be registered in Nigeria and accorded the statutory right provided by the Trademarks Act Cap T 13, Laws of the Federation of Nigeria 2004 (“the Trademarks Act”), it must go through various stages. These stages of trademark registration are exclusive of each other and each must be completed before the next. Of all the stages, the publication/advertisement stage often poses a major challenge in the course of trademark registration.
The registration process commences with the filing of the trademark application. The person who files a trademark application is referred to as the proprietor. In Nigeria, a trademark application can be filed manually through the Industrial Property Administration System (IPAS) or via the online platform. Upon filing the application, the Registry would issue a document known as an Acknowledgement Notice. This Notice indicates that the trademark has indeed been successfully filed and the actual date of filing. Upon examination of the trademark in line with the requirements stipulated under the relevant provisions of the Trademarks Act, the Registry will then proceed to issue either an Acceptance or Refusal Notice, subject to such amendments, conditions or limitations if any as the Registrar of Trademarks may think right. See Section 18(2) of Trademarks Act.
The next stage after issuance of the acceptance notice is the publication/advertisement stage. In this stage, the trademark is advertised/published in the journal in order to allow for opposition by the public. Where the trademark is not opposed or the opposition filed against the mark is unsuccessful, the mark proceeds to registration.
Publication in the Trademarks Journal serves as a notice to the world to challenge the registration of a particular trademark on various grounds including but not limited to the fact that the mark is descriptive; non-distinctive; confusingly similar or identical to an existing mark; contrary to public policy or morality; etc.
Trademark opposition occurs when a trademark proposed to be registered is advertised/published in the Trademarks Journal for any person to oppose the registration of the trademark within two months on the grounds provided under the Act. See Section 20 of Trademarks Act. In order to oppose or challenge the registration of a trademark, a party must first file a Notice of Opposition.
For the purpose of this article, the procedures and steps involved in opposition proceedings in Nigeria would be briefly outlined and analyzed.
Notice of Opposition
A Notice of Opposition must be filed within Two (2) months from the date the Journal was published. This timeline is definite and non-extendable. Thus, once a person fails to challenge the registration of a trademark within the stipulated period, his right to oppose the trademark is waived and he cannot be granted an extension of time. A Notice of Opposition once filed, prevents the Registry from proceeding with registration of the mark in question until a decision/ruling is delivered in favour of its registration. In opposition proceedings, a party who files a Notice of Opposition is referred to as the Opponent while the proprietor of the trademark is referred to as the Applicant.
Upon serving the Applicant with the Notice of the Opposition, the Applicant is expected to file a Counter-statement in response to the Notice of Opposition within One (1) month of receipt of the Notice of Opposition. Please note that the one-month period to file a counter-statement is also non-extendable.
Where the Applicant fails to file a Counter-statement, the Opponent can apply for the said trademark to be deemed as abandoned. Abandonment indicates that the Applicant is not interested in defending the opposition hence he is deemed to have abandoned his trademark application. Abandonment can bring an end to an opposition proceeding.
Upon the application for abandonment, the Registry issues a Notice of Abandonment which serves as a proof that the trademark application has indeed been abandoned by the Applicant. The effect of the issuance of a Notice of Abandonment is that the Registry cannot proceed with the registration of the trademark.
Evidence by way of Statutory Declaration
Where the Applicant files a Counter-statement, the next step is the filing of the Opponent’s evidence by way of statutory Declaration. In this step, the Opponent makes averments on the reasons why the trademark should not proceed to registration and may furnish documents in support of its claim. The documents to be furnished by the Opponent range from registration certificate of the previous trademark to evidence of use, sales figures, international registration, etc. The Evidence by way of Statutory Declaration is to be filed within One (1) month of receipt of the Counter-statement from the Applicant. However, this one-month period may be extendable if the Opponent applies and obtains an extension of time. The grant of an application for extension of time is solely at the discretion of the
Registrar of Trademarks.
The Applicant, upon receipt of the Opponent’s Statutory Declaration is also required to file its own Evidence by way of Statutory Declaration within One (1) month of receipt of the Opponent’s Statutory Declaration. An extension of time can also be filed and obtained from the Registry, where necessary.
By law, the Opponent also has a right to reply to the Applicant’s Statutory Declaration within One (1) month and where the Applicant need to respond to the Reply Statutory Declaration, it can also file further evidence in response with the leave of the Trademarks Registrar.
Briefs of Argument
Briefs of Argument connote that the opposition proceeding is almost at hearing stage. In preparing the Briefs of Argument, parties are to canvass arguments whilst relying on statutes and case laws to support their cases. The essence of relying on case laws is to relate the issues in earlier decisions to the issues in the present case and with the use of techniques of advocacy, compel the Tribunal to reach a favourable decision.
It is noteworthy that the filing of Written Addresses is not compulsory as there are no express mandatory provisions to file same under the Trademarks Act or Regulation. However, it is advisable to file a written address because in practice, the Trademarks Tribunal tends to rely on the Written addresses in analyzing the weight of either party’s arguments before reaching a decision. This also expedites the hearing of the Trademarks Tribunal. The parties file their respective Written Addresses
within the timeline specified by the Trademarks Tribunal.
As opposed to the conventional court’s style of adumbrating or making oral submissions on the arguments made in the filed court processes, parties in an opposition proceeding only need to adopt their Briefs of Argument as their respective arguments in support of their case.
The Trademark Tribunal delivers a Ruling after the adoption of the Briefs of Argument. The Ruling seeks to answer the sole issue for determination that is ‘Whether the trademark application should proceed to registration’. The decision of the Trademarks Tribunal is subject to appeal where a party is
dissatisfied with the Ruling of the Trademarks Tribunal.
In the last decade, the Nigerian Trademark Registry has recorded a significantly higher number of opposition proceedings. The awareness that opposition proceedings provide an avenue for the protection of trademark rights is on the increase hence, brand owners are now on the lookout for any identical or confusingly similar marks published in the Trademarks Journal. This process has indeed helped to reduce confusion in the marketplace.
It is noteworthy that although a handful of challenges may be encountered during opposition proceedings, the process is known to be more cost-effective and time-saving in comparison to the other options of filling an infringement, passing off, or cancellation action in court, if the trademark
application proceeds to registration.
This article is published as part of NLIPW Trademarks, Vol. 3 No. 6 of July 17, 2019.