Who can oppose the registration of a trademark in Nigeria?
Any person who believes that a trademark application with the Nigerian Trademarks, Patents and Designs registry should not be registered can file a trademark opposition. The law does not require that you have prior rights — Section 20 of the Trademarks Act CAP T13 Laws of the Federation of Nigeria 2004.
What are the grounds for opposing trademark applications in Nigeria?
Trademark oppositions can be filed at the Trademarks registry in Abuja, Nigeria. A trademark that has been accepted by the trademarks registry may be opposed on any of the grounds for rejection set out in the Trademarks Act and also based on Sections 9(d), 11, 12, 13, and 31 of the Act. Some of the most common grounds for opposition include:
- The trademark is identical or very similar to a prior registered/existing registration.
- The trademark contains deceptive or scandalous matters or designs.
- The trademark contains names of chemical substances.
- The applicant has no intention to use the trademark.
- The trademark contains geographical names.
- The trademark contains some restricted words and/or symbols.
What is the procedure for opposing trademark applications in Nigeria?
Under the Nigerian Trademarks Act, a party who seeks to oppose a trademark application must do so in writing by filing a Notice of Opposition. The Notice of Opposition must be filed within two months of the proposed mark’s publication and must state the ground(s) for opposition — Section 20 (1) & (2).
Once the Notice of Opposition is filed, the registrar of trademarks must send a copy of the notice to the applicant within one month of receipt of the Notice of Opposition and the applicant can then respond with a counter statement showing the grounds for the application to register the trademark in Nigeria. If the applicant fails to file the counter statement, the application will be deemed to be abandoned — Section 20 (3).
In cases where the counter statement is filed, the registrar must send a copy of the counter statement to the person who is opposing the trademark application in Nigeria, who will be required to file a statutory declaration citing evidence in support of the opposition — Section 34(1).
As soon as the statutory declaration is received, the applicant may proceed to file his own statutory declaration while providing evidence in support of the application to register the trademark. At this point, the party who is challenging the registration may file a reply to the statutory declaration within one month of receiving the document. The registrar will then give notice of hearing and shall decide the case based on evidence presented by both parties.
Is the Registrar’s decision in trademark opposition proceedings final?
No. It is important to note that while opposition proceedings are heard by the trademarks registrar, there is a right of appeal to the Federal High Court. For example in Nabisco Inc. v. Allied Biscuits Company Ltd (1998) 7 S.C (Pt II) 99, the registrar’s decision was appealed up to the Supreme Court of Nigeria. In that case, Allied had previously filed an application to register ‘RITZ’ as a trademark following searches at the trademark registry and the issuance of the acceptance form (31795). A while later, Nabisco Inc. made an application for ‘RITZ’ to be registered as their trademark and their application was accepted and subsequently advertised in the trademarks journal in Nigeria. When Allied discovered the advertisement, it commenced opposition processes at the registry. At the close of hearing, the Registrar refused to register RITZ as Nabisco’s trademark. Although Nabisco provided evidence to show that it had sufficiently used the Mark outside Nigeria, the Registrar refused the submission. Relying on the provision of Section 21(1) of the Trade Marks Act of 1965, Nabisco appealed to the Federal High Court and the Appeal was allowed but at the Court of Appeal, it was set aside and the judgment of the registrar of trademarks was restored. Dissatisfied with the decision, Nabisco appealed to the Supreme Court of Nigeria, who held that Nabisco had not used the Mark RITZ sufficiently to acquire a reputation for the Mark in Nigeria.
What are the costs associated with trademark opposition in Nigeria?
Some of the official costs associated with trademark oppositions in Nigeria include:
|TM Registry Payment Code||Fee Description||Application Fee||Service fee||Total Amount|
|T004||Notice of Trademark Opposition||₦8,000||₦2,700||₦10,770|
|T007||Preliminary Opposition (Hearing/Security)||₦10,000||₦2,728||₦12,728|
This article was originally published as part of Trademarks Law Vol. 1 No. 11. The article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.