Is a Trademark Search Worth the Money?

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Very often, trademark attorneys in Nigeria present their clients with the option of conducting an official trademark search at the Trademarks Registry in Abuja. The rationale behind this clearance search is to make sure that the proposed trademark has not been previously registered and is not identical or confusingly similar to an existing trademark in Nigeria.

In many cases, clients in order to save money may chose to forego this optional search and proceed with the filing of their trademark application. While some trademark applications do not experience any issues with the filing and are accepted, the registry in some cases may refuse the trademark application on grounds that it conflicts with an existing trademark or multiple trademarks.

Below are some examples of trademark applications that were rejected by the registry in Nigeria on grounds that they conflicted with existing trademarks.

PROPOSED TRADEMARK

EXISTING TRADEMARK

PROPOSED TRADEMARK: AMERICAN HONEY AND DEVICEAPPLICANT: CAMPARI AMERICA LLC

DATE OF FILING: 2015‐06‐02

CLASS: 33

TRADEMARK: AMERICAN HONEYOWNER: RARE BREED DISTILLING INC.

DATE OF FILING: 2010-07-12

CLASS: 33

PROPOSED TRADEMARK: HIACEAPPLICANT: JIANGSU HAISHI AUTOMOTIVE COMPONENTS CO., LTD.

DATE OF FILING: 2015‐03‐06

CLASS: 11

TRADEMARK: HIACEOWNER: TOYOTA JIDOSHI KABUSHIKI KAISHA

DATE OF FILING: 1978-09-01

CLASS: 11

PROPOSED TRADEMARK: YVES ROCHER & DEVICEAPPLICANT: LABORATOIRES DE BIOLOGIE VEGETALE YVES ROCHER

DATE OF FILING: 2015-03-13

CLASS: 3

TRADEMARK: YVES ROCHEROWNER: SOCIETE DETUDES DE CHIMIE

DATE OF FILING: 1984-10-29

CLASS: 3

PROPOSED TRADEMARK: BUTTERKISTAPPLICANT: INTERNATIONAL BISCUITS LIMITED

DATE OF FILING: 2013-09-19

CLASS: 30

TRADEMARK: BUTTERKIST BUTTERBREADOWNER: BURKER TRAIN NIG. LTD

DATE OF FILING: 1982-06-10

CLASS: 30

PROPOSED TRADEMARK: GIACOBAZZIAPPLICANT: DONELLI VINI S.P.A

DATE OF FILING: 2013‐10‐02

CLASS: 33

TRADEMARK: GIACCOBAZILOWNER: BENEKS GROUP OF CO. LTD

DATE OF FILING: 2005-10-24

CLASS: 33

PROPOSED TRADEMARK: BLACK VELVETAPPLICANT: CONSTELLATION CANADA, LIMITED

DATE OF FILING: 2013‐09‐27

CLASS: 33

TRADEMARK: BLACK VELVET MALTOWNER: NIGERIAN BREWERIES PLC

DATE OF FILING: 1992-12-21

CLASS: 33

PROPOSED TRADEMARK: APCAPPLICANT: SCHNEIDER ELECTRIC IT CORPORATION

DATE OF FILING: 2013‐08‐06

CLASS: 9

TRADEMARK: APCOWNER: ANADARKO PETROLEUM CORP GUS.CORD.ORG

DATE OF FILING: 2006-08-29

CLASS: 9

The decision to conduct a comprehensive search for a proposed trademark is completely up to the client but it is definitely an important option to consider before filing a trademark application as it may save the client a lot of money long-term.

This article was originally published on October 9, 2016. The article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.

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About Ufuoma Akpotaire 212 Articles
Ufuoma is a Senior Editor and Director of Regulatory Policy at NLIPW. She assists clients in the protection of copyrights, trademarks and patents. She counsels clients regarding validity and infringement matters and has experience acting against the infringement of IP and addressing counterfeit issues. She holds a Masters degree (LL.M.) from Columbia Law School, New York and a law degree from the University of Nigeria (LL.B. Honors). She is admitted to practice law in Nigeria and in the State of New York. Ufuoma cut her teeth in the intellectual property practice groups of some of the largest law firms in Nigeria and has years of experience working with major non-profit organizations in New York. Email: uakpotaire@nlipw.com