Registering a trademark in Nigeria is a crucial step for businesses and individuals who want to protect their brand identity and prevent others from using similar marks. Trademark registration in Nigeria has become a trending topic in recent years due to sustained interest by businesses, brands and individuals in protecting their names, identity and distinguishing their goods and services from that of others. The process ensures that your brand name, logo, or slogan is legally protected under Nigerian law.
This article provides a comprehensive guide into trademarks applications in Nigeria, outlining the process, requirements, and benefits of trademark registration.
Trademark rights may arise both through use and through registration. However, unless a trademark is registered in Nigeria, the owner shall not be entitled to institute any proceedings to prevent, or to recover damages for, infringement. A registered trademark confers on the owner the exclusive right to use the mark and the right to sue for infringement in the event of unlawful use.
The Nigerian Government agency responsible for Trademark Registration in Nigeria is the Trademarks, Patents and Design Registry; Commercial Law Department, Ministry of Trade and Investments, Abuja, Nigeria. Trademarks are registered at the Nigerian Trade Marks Registry.
Here's a step-by-step guide to the trademark registration process in Nigeria:
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1. Understanding Trademarks
A trademark is any sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It can be a word, logo, symbol, design, or combination of these elements. In Nigeria, trademarks are governed by the Trade Marks Act, Cap.
Words, logos, phrases, slogans and devices, either separately or in combination, may be protected as trademarks. However, generic names, descriptive marks and marks that are identical or confusing similar to already existing trademarks cannot be registered, subject to some exceptions, for example, honest concurrent use.
2. Trademark Search
Before you apply for a trademark, it's important to ensure that your desired trademark is unique and does not infringe on existing trademarks. You can conduct a trademark search to verify if a similar mark is already registered or pending registration.
Upon request and payment of the requisite fees, the Trade Marks Registry will conduct a preliminary search to confirm the availability of the mark. The search is done manually at the Trademarks Registry in Abuja. You can visit the registry to conduct the search if you intend to undertake the registration yourself.
3. Preparing Your Application
Once you have discovered that your trademark is unique upon search, you need to prepare your application.
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Filing requirements for a trademark application include a completed Trade Mark Form 1, a clear representation of the mark, and a list of goods or services and relevant form within the appropriate class under the Nice Classification. A power of attorney is also necessary where the applicant requires an agent to act on its behalf. However, the power of attorney does not need to be notarised - a simple signature from the applicant or an authorised person shall suffice.
Additional requirements:
- Representation of the Trademark: Submit a clear representation of the trademark.
- Description of Goods or Services: Specify the goods or services for which the trademark will be used.
- Power of Attorney which authorizes an agent/lawyer to handle the registration on the applicant’s behalf.
The Nice Classification of Goods and Services is used for trademarks in Nigeria, although in practice, the regulators occasionally call for more specific descriptions.
4. Filing the Application
The application is submitted to the Trademarks Registry. You can file your application in person or through a trademark agent or attorney.
- Application-Acknowledgement: Fill the necessary prescribed form for the Trademark application.
- Provide all necessary details required to be provided in the prescribed form, including the applicant’s name, type and description of the Mark, classes you are applying to register the Mark under, et cetera.
- When the prescribed form has been filled and all preliminary requirements met, submit the application and pay the prescribed application fees.
- For online applications, acknowledgements are immediately available upon payment of filing fees.
- Proof of Payment: Pay the prescribed fee for filing the application.
5. Examination of the Application
After submission, the Trade Marks Registry will examine your application to ensure it complies with the legal requirements.
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Applications undergo a substantive examination for distinctiveness and potential conflicts with existing marks. Applicants have the opportunity respond to rejections by providing evidence or arguments.
Substantive Examination: Reviewing if the trademark is distinctive and not similar to any existing trademarks. If the examination reveals any issues or conflicts, the applicant will be notified and given the opportunity to address them. This may involve providing additional information or modifying the trademark.
6. Acceptance for Registration
If the examination is successful, the registry will issue a Registration Acceptance, which indicates the trademark has been accepted for registration although not completely registered.
7. Publication in the Trade Marks Journal
If the application passes the examination, it will be published in the Trade Marks Journal.
If the Registrar determines that the Mark is distinctive enough, and does not fall within prohibited Marks that cannot be registered, and that all preliminary requirements were met, then the Registrar will cause for a publication in the Nigerian Trademarks Journal. The aim of this publication is to give members of the public the opportunity to note the Mark being sought to be registered and to enter their opposition to the application, if any.
Opposition Period: There is a two-month period during which anyone can file an opposition to your trademark application.
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8. Registration
If no opposition is filed, or if any opposition is resolved in your favour, the Trademarks Registry will register your trademark.
Where registration is not opposed within the prescribed period from the date of publication in the Trademarks Journal, the Registrar shall, within any time from the expiration of that two months’ publication, enter the Trademark in the Register.
9. Post-Registration
- Renewal: Ensure timely renewal of your trademark to avoid lapsing.
- Monitoring: Regularly monitor the market to detect any unauthorized use of your trademark.
- Enforcement: Take action against any infringement or unauthorized use of your trademark.
10. Professional Assistance
While it is possible to handle the trademark registration process on your own, consulting with a trademark attorney can be beneficial.
Key Considerations
- Multiple-class trademark applications are not possible in Nigeria. A separate application should be filed per each class.
- The official language of prosecution of the Nigerian trademark application is English.
- The legalization or notarization of the Power of Attorney is not required.
- The official grant fee is due upon issuance of the Notice of Allowance.
Duration and Renewal
The original validity of a trademark is seven years from the date of filing. It can then be renewed indefinitely for additional 14-year terms, provided that applicable renewal costs are paid.
The validity term of a trademark in Nigeria is 7 years from the filing date and renewable for the successive periods of 14 years. An application for renewal must be filed 3 months before the expiration date of the registration. The trademark may be renewed within 1 month after the renewal due date providing that a corresponding surcharge has been paid. It is possible to restore missed 1-month term for payment of the renewal fee upon payment of the stipulated surcharge. There is no set deadline for said restoration.
Use of Trademark
Use and proof of use of a trademark or service mark is not required for trademark application or registration. A registered trademark does not have to be used immediately upon registration. However, failure to use the mark for five consecutive years after registration may render it vulnerable to cancellation on the grounds of non-use.
Indicating Trademark Use
While not mandatory, using symbols such as TM for unregistered marks of (R) for registered trademarks helps signify legal rights and serves as notice to potential infringers.
Appealing a Denied Application
The applicant may appeal to the Registrar where an application is objected to; and subsequently may appeal to the Federal High Court if the administrative resolution is unsatisfactory. Further appeals lie to the Court of Appeal, and finally to the Supreme Court.
Upon refusal, the applicant may request that the registrar state in writing the grounds for this decision and the materials relied upon in arriving at this decision.
Third-Party Opposition
Trademark applications are published for opposition, allowing third parties to challenge any application based on prior use, bad faith or similarity to existing marks, within a two -month window. Procedures involve filing a notice of opposition and attending hearings. In addition, application for the cancellation of a mark may be filed after the mark has been registered.
Yes, a third party can oppose registration of a trademark after publication by filing a notice of opposition stating the basis for the opposition. The statutory timeframe for an objection/opposition is two months after publication of the application in the Trade Marks Journal.
The procedure involves the issuance of a notice of opposition by the opponent setting out the basis for the opposition. The applicant has one month to file a counterstatement indicating the grounds on which it relies for its application. The application will be deemed abandoned if the applicant fails to file a counterstatement within the specified timeframe. If the applicant files a counterstatement, the registrar will send a copy of the counterstatement to the opponent and the parties will then exchange statutory declarations in the form of evidence.
Rights Conferred by Registration
Owners of trademarks registered under Part B of the register enjoy similar rights as owners of trademarks registered under Part A. These rights include the exclusive right to use the registered mark in Nigeria in relation to the goods or services for which it is registered and the right to prevent infringement.
Invalidation
An application in the prescribed format should be made to the registrar when the procedure is instigated at the instance of a registered owner, registered user or other interested/concerned person(s), stating the grounds and particulars for seeking invalidation.
Licensing
Yes, a trademark licence must be registered with the Trade Marks Registry by the licensee and the registered owner by filing the prescribed form and paying the prescribed fees.
Unregistered Trademarks
Trademark rights may be established without registration under the common law principle of passing-off. However, registration offers stronger legal protection as under our laws, registration is prima facie proof of ownership.
In case of infringement, the owner of an unregistered trademark can bring an action for passing off before the federal high courts either alone or as part of an infringement action (Section 3 of the Trade Marks Act).
Famous Foreign Trademarks
As long as a famous foreign trademark meets the requirements to qualify as well known, it will be protected under the Trade Marks Act and international treaties like the Paris Convention and TRIPS Agreement, even if it is not used domestically. Evidence of global recognition, extensive advertising, reputation in Nigeria or commercial presence, etc, are necessary to establish a brand as well known. Such marks are protected against unauthorised use or registration and can prevent the dilution of their reputation.
Despite this protection, it is always best for famous marks to be registered locally.
Trademarks Online and Domain Names
Apart from the Trade Marks Act and the Common Law principles of passing off, the Nigerian Internet Registration Association, which manages the .ng country code top-level domain has a dispute resolution procedure in place for instances of trademark infringement and cybersquatting. Online trademark infringements are usually remedied by injunctive reliefs and damages.
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