NLIPW Trademarks Law Volume 1 Number 7
(Trademarks in Nigeria)
What is a trademark?
A trademark is a word, letter, label, numeral, color, signature, device, or any combination of words, letters, labels, signatures that identify and distinguish the source of the goods of one party from those of others in the course of trade.
Are there differences between trademarks, patents or copyright?
Yes. Trademarks, copyrights and patents protect different things. While a trademark identifies and distinguishes the source of the goods of one party from those of others, patents protect an invention and a copyright protects an original literary, musical or artistic work.
Where do I register my trademark in Nigeria?
You can register a trademark at the Trademarks, Patents and Design Registry in Abuja, Nigeria or if you are an accredited agent, you can register online at the Trademarks Registry’s Website. The Registry reviews trademark applications for registration and determines whether or not an applicant meets the requirements for registration.
Is it mandatory to register my trademark with the Trademarks Registry in Nigeria?
No, it is not mandatory. Even without registration, you may still use any mark adopted to identify the source of your goods and/or services. However, as the owner of an unregistered trademark, you can only bring an action for passing-off should there be an infringement (you will not be able to maintain an action for trademark infringement under the Trademarks Act of 1965).
Are there any advantages of registering my trademark with the Trademarks Registry in Nigeria?
Yes. By registering your trademark with the Registry, not only do you provide constructive notice to the public of your claim of ownership of the mark, but you can also file an action at the Federal High Court for trademark infringement in the event of such.
Should I have an attorney or Accredited Agent?*
Although attorneys and accredited agents are not required by the Trademarks Act, the Trademarks Registry on July 16, 2012 announced that only accredited agents can make use of its online registration process. This accreditation listing was challenged by the Registered Trustees of Intellectual Property Lawyers Association Nigeria (IPLAN) and in October 2013, Ademola J. sitting in a Federal High Court in Abuja held that there must be a publication in the Federal Gazette as a condition precedent to imposing administrative fees on applications brought under the Trademarks Act and the Patents and Designs Act, to be complied with by the 1st and 2nd Defendants (the Trademark Registrar and the Honorable Minister for Trade and Investment respectively).
In the absence of such publication, the court held that neither the 1st or 2nd defendant can validly increase or prescribe additional fees under the Trademarks Act or the Patents and Designs Act. The Court also held that the additional fees imposed by the 1st and/or 2nd Defendants from July 16, 2012 are null and void and of no effect. An injunction was issued restraining the 1st and 2nd Defendants from collecting additional fees other than the application fees prescribed by Law.
The Court however declined to grant an injunction restraining the Defendants from introducing an accreditation scheme based on the 1st Defendant’s statement on oath that it was neither preventing nor restricting access to the Registry. The Court also held that by introducing the online filing system, the Minister acted pursuant to the powers conferred by Section 45(1) of the Trademarks Act.
What is the procedure for registration of trademarks in Nigeria?
- Prepare a power of attorney authorizing an agent to register your mark at the Trademarks Registry.
- Conduct a pre-registration search to confirm that your proposed mark does not conflict with any other trademark.
- Submit an application for registration of your mark. The application should be addressed to the Registrar of Trademarks and accompanied by a representation of your mark (which must be drawn on a bromide) in the space provided in the form. If your mark contains words in any language other than English, it must be translated into English.
- Complete the application for registration and state whether it is for registration in Part A or Part B and the class, device or product, name and your business address, as well as that of your agent.
Upon submission of your application, the Registry will issue an acknowledgement to your agent, showing the application number, date of filing, and other information about the application.
The Registry will then conduct a preliminary search to ascertain whether there are identical marks in its records. If there are none, it will issue an Acceptance Notice. If the search reveals similar marks, the Registry communicates this information to your agent in writing. You have two months to reply or apply for formal hearing otherwise your application will be deemed as withdrawn.
If there are no similar marks, the next step is for the Registry to advertise in the Trademarks Journal. If there is an opposition to the application after advertisement by the Registry, it must be in Form 6, be duly signed by your opponent and filed within two months of advertisement.
You must file a counter statement to the opposition within one month of receiving notice of opposition, stating the grounds in support of your application.
If no opposition is received to the advertisement or your opponent abandons its opposition, the Registry will issue a certificate of registration to you in Form 11.
Is registration of my mark guaranteed?
No, registration is not guaranteed. The Registrar of trademark will review your application, which may be refused based on the Trademark Act because of the likelihood of confusion with a prior registered mark or other grounds contained in the Act.
How long will it take to register my mark in Nigeria?
Although the Registry typically gives the timeline as 3-6 months for an application to be processed, in practice the processing time differs on a case by case basis depending on the legal issues that may arise in the examination of the application.
How long is a trademark valid in Nigeria?
A trademark is valid for seven years from the date of the application but you may renew the registration of the trade mark for an additional period of fourteen years.
For more information on filing trademarks in Nigeria, please email email@example.com. This article was originally published on June 9, 2013. The article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.