June 15, 2016 — Most lawyers are familiar with the process of opposing trademark applications and with making requests for amendment of errors relating to the names and addresses of trademark applicants. But what do you do if an opposed trademark is accidentally registered by the Registry while your opposition is pending? For example, a mark, ‘Sounds Like His Trademark’, is published in the Journal and is similar or likely to cause confusion with your clients registered trademark, ‘Sounds Like My Trademark’. You file a trademark opposition but after a few months you discover that Sounds Like His Trademark has entered into the Register of Trademarks as a registered trademark in Nigeria. What would you do?
Your next step is to put in an application for the rectification or removal of the trademark from the Trademark Register in accordance with Regulation 83 of the Trademark Regulations.
Applications to the Registrar for Rectification (Sections 31, 32, 38 and 39)
8~. (I) An application to the Registrar under any of the sections 31, 32, 38 or 39 for the making, removing or varying of any entry in the register shall be made on Form 27 and shall be accompanied by a statement setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks.
(2) Where the application is made by a person who is not the registered proprietor of the trade mark in question it shall be accompanied by two unstamped copies of the application and two copies of the statement, and the Registrar will forthwith serve these copies to the registered proprietor at his trade or business address as entered in the register and if an address for service different therefrom is entered in the register, at that address also.
You will begin this process by completing Form 27 which is the form used to apply for the rectification or removal of a trademark from the Trademark Register.
In our example above, as soon as you discover that despite your client’s opposition, the trademark ‘Sounds Like His Trademark’ has been registered, you should file an application for the removal and rectification of the Trademark Register using Form 27. A sample Form 27 is provided below:
Nigeria: Trade Marks Regulations 1967
FORM 27 TRADE MARKS ACT (FEE STAMP-ITEM 16)
Application to the Registrar for the Rectification of the Register or the Removal of the Trademark Sounds Like My Trademark from the Register (Regulation 83)
IN THE MATTER OF the Trade Mark No .12345 registered in the name of Similar Proprietor Limited in Class 5
We Original Proprietor Limited hereby apply that the entry in the Register in respect of the above mentioned Trademark may be removed and rectified in the following manner .
The grounds of our application are as follows: The trademark ‘Sounds Like His Trademark’ conflicts with or so nearly resembles an earlier application ‘Sounds Like My Trademark’, RTM 4210/15 in Class 5 registered in the name of Original Proprietor Limited. Following the publication of the trademark ‘Sounds Like His Trademark on March 31, 2016’, we filed our Notice of opposition at the Registry on May 1st, 2016. The Trademark ‘Sounds Like His Trademark’ was however registered by the Registry on June 5, 2016.
We therefore request that the application be removed from the Register of Trademarks.
No action concerning the Trademark in question is pending in the Court. Address for service in Nigeria in these proceedings: Original Proprietor Limited, 1 Original Street Lagos, Nigeria.
Dated this 10th day of June, 2016
To: The Registrar
Trade Marks Registry
Federal Ministry of Commerce
Garki, Abuja, Nigeria.