Refusal of a Trademark Application on Grounds of Descriptiveness

Refusal
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Trademark Law Vol. 3 No. 2

January 22, 2017

Refusal on Grounds of Descriptiveness in Nigeria

After a trademark application is filed in Nigeria, an applicant may receive a refusal slip stating that ‘the mark is not registrable as it is descriptive of a class of goods or services’. What this means is that the proposed mark contains words that are usually used in trade to describe the product in question. For example,  ‘Airbus’ for an airbus operating in Lagos, “creamy” for yogurt, “Sweet” for chocolate, or “Abuja Green Tea” for green tea made in Abuja.  The reason for the refusal is that, generally, businesses and competitors need to be free to use descriptive language when characterizing their own goods and services to the public.

As soon as the refusal slip is issued, the question most clients ask at this stage is, whether to file a new application with a variation of their original application, or if an appeal of the registrar’s decision is the way to go.

The answer to the question depends on whether or not the client has evidence to show that the mark has acquired distinctiveness.  In order to proof that the mark has acquired distinctiveness as required under Section 9 of the Trademark Act, an applicant whose mark has been refused  may provide evidence in the form of a specimen for either goods or services.

Acceptable specimens for Goods

Some acceptable specimen of goods include:

      • Product labels and tags showing the mark;
      • Product packaging showing the mark;
      • A photograph of the product showing the mark directly on the product;
      • Signage used in a product display at a store;
      • A webpage showing or describing the product near the mark and with purchasing information;

Acceptable specimens for Services

Some acceptable specimen of services include:

            • Brochures and leaflets;
            • Menus for restaurants;
            • Business cards and letterhead with a reference to the services;
            • Print or Internet advertising;
            • Marketing materials; and
            • A photograph of business signage and billboards.

Other Evidence

  • Evidence showing that for example, a quick search of WIPO Global brand shows that the proposed mark has been registered and filed in multiple countries and trademark registries.
  • Evidence showing ownership by the applicant of one or more active prior registrations of the same mark in Nigeria or other African Countries;
  • Affidavits, letters, or statements from trade partners and consumers, consumer surveys or other appropriate evidence showing that the proposed mark distinguishes the goods/services;
  • Evidence that when you type proposed mark in a search engine, the applicant’s company is ranked first etc.
  • In cases where an applicant has disclaimed the word that is descriptive as part of the application, it is important to emphasize this fact during the appeal process.

It is important to remember that in filing an appeal, the burden is on the applicant to show that the mark is distinctive and there are no guarantees that an appeal would be successful.

This 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 259 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