October 12, 2016 — When an application is filed to register a trademark in Nigeria, the trademark registry considers whether the proposed mark is identical or similar to trademarks already registered in the country. In determining whether the mark may conflict with existing marks, the registry considers the look, sound, meaning, class of goods and services, along with many other factors.
If the proposed trademark is in a foreign language, the application must include a translation or a transliteration of the mark so that the meaning can be ascertained and compared with other marks that have been registered in Nigeria.
If the proposed mark is composed of non-Latin-based letters, such as Chinese or Korean, it is expected that the applicant will provide a translation or transliteration. For example, in 2013, Yekalon Industry Inc., applied to register the trademark ‘YEKALON & Chinese characters YAN JIA LONG’ in Nigeria. The applicant included the language of the non-English words as well as a translation of the words.
In cases where the proposed mark is written with letters from the Latin or Roman alphabet e.g. most German, French, and Spanish words, then a translation should also be provided. For example, on January 24, 2013, Abbott Laboratories filed an application to register the trademark ‘Pediasure in Arabic Characters’ (depicted on the right) in Class 5 in Nigeria. The trademark name included a translation of the mark and the language in which the mark is depicted.
In some cases, of course, no translation will exist, especially if the foreign word is made up or a collection of random characters.
Section 32 of the Trademark Regulations in Nigeria deals with translation and transliteration of trademarks. It provides as follows:
Transliteration and translation.
- Applications for the registration of the same mark in different classes shall be treated as separate and distinct applications, and in all cases where a trademark is registered under the same official number for goods in more than one class, whether on conversion of the specification under regulation 6 of these Regulations or otherwise, the registration in respect of goods included in each separate class shall be deemed to be separate registration for all the purposes of the Act.
- The Registrar, if dissatisfied with any representation of a mark” may at any time require another representation satisfactory to him to be substituted before proceeding with the application.
- (1) Where a drawing or other representation or specimen cannot be given in manner aforesaid, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient. (2) The Registrar may also, in exceptional cases, deposit in the office a specimen or copy of any trademark which cannot conveniently be shown by a representation and may refer thereto in the register in such manner as he may think fit. (i).Where application is made for the registration of a series of trademarks under section 25( I) of the Act, a representation of each trade mark of the series shall be included, all as aforesaid, in the application form, in the unstamped duplicate thereof (if any), and in each of the accompanying Forms 3. (ii.)(I) Where a trade mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be indorsed on the application form and on each of the accompanying Forms 3 a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such indorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.
(2) Where a trademark contains a word or words in a language other than English the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall he indorsed and signed as aforesaid. Separate applications.
When the trademark registry receives an application for a non-English or non-Latin-based trademark without a translation or transliteration, it may require that a statement be submitted translating the mark. The rationale for this is to prevent applicants from simply translating a mark into another another language in other to attain distinctiveness. By requiring the translation, the registry can compare the English-meaning or English-sounding version of the foreign-language mark with other marks registered at the registry in Abuja, and can reject or accept the mark on that basis.