1. What is a trademark cancellation proceeding?
In Nigeria, a trademark cancellation proceeding takes place when a party believes it is being damaged by a registered trademark and seeks to remove the mark from the trademark register. Under Nigeria’s Trade mark Act, although the word “cancellation” is not out-rightly used, following an application to the Registrar of trademarks or the Federal High Court challenging the validity of an entry on any of the grounds set out in the Act, an order may be made expunging or varying the entry in the register.
31. (1) Subject to this and the next following section, 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 to the court or, at the option of the applicant and subject to section 56 of this Act, to the Registrar, on either of the grounds set out in subsection (2) of this section.
Relevant Provisions: Section 31, Section 38 (1)(d) and Section 56 of the Trade marks Act
2. Who can commence cancellation proceedings?
Any person who establishes sufficient interest to the satisfaction of the Registrar of trademarks or the Federal High Court can commence a cancellation proceeding in Nigeria. You must show that you have legal interest.
Relevant Provisions: Section 38 (1) of the Trade marks Act
3. On what grounds can cancellation proceedings be instituted with regard to registered trademarks?
An application to cancel a trademark in Nigeria can be made on multiple grounds. Some of the most common grounds for cancellation include:
- lack of distinctiveness of the mark.
- non-use i.e. the mark was registered without any bona fide intention to use the mark and there has in fact been no use of the trademark up to one month before the date of the application or the mark has not been used for a continuous period of at least five years.
- the mark is generic, misleading or deceptive.
- the mark is contrary to public policy.
- the mark was registered in bad faith.
- the mark is a well known or famous mark.
- the mark consists of a geographical indication.
- an earlier application or registered mark has been made to the trademark registry.
Relevant Provisions: Section 31(2), Section 38 and Section 56 of the Trade marks Act
4. What are the steps for filing a petition to cancel a registration?
In Nigeria, a cancellation action must be filed directly with the trademark registry by a party that believes that it is damaged by a registration. Such a party may file the application for cancellation with the Trademark Registry which is empowered by the Trademarks Act of 1965 and the Trademark Regulations to hear and decide such cases. The application shall be made on statutory Form 27 and be accompanied by a detailed statement setting out the nature of the applicant’s interest, the facts relied on in support of his case and the reliefs sought. Both the application and the statement may be prepared and signed by an agent on behalf of the applicant.
When the application for cancellation is made before the Federal High Court, a notice of originating motion that sets out the relief claimed together with the grounds upon which the claim is sought shall be filed. The notice must be accompanied by an affidavit sworn by any person who has personal knowledge of the facts to be deposed or who has gathered the facts from documents made available to him or has been informed of the facts by someone whom he has reasonable grounds to believe.
Relevant Provisions: Section 83(1) and (2) of the Trade marks Regulations
5. What is the official cost of filing a cancellation proceeding in Nigeria?
The official cost associated with trademark cancellation in Nigeria is provided below and is non-refundable. Please note that this does not include attorney fees.
|TM Registry Payment Code||Fee Description||Service fee||Total Amount|
|T018||Cancellation of registered user of Trademark||₦2,900||₦10,900|
This was originally published as part of NLIPW Trademark Law Vol. 1 No. 13 eDigest of October 14, 2013. The article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.