Introduction
A Trademark is a unique sign or mark that distinguishes the goods and services of one business from another. A mark can either be a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof. Most businesses, companies or organizations have distinctive marks that sets them apart from other businesses.
The relevant law that governs Trademark in Nigeria is the Trademarks Act, Laws of the Federation of Nigeria 2004 (LFN 2004). This article explains the procedure for the registration of trademarks, enforcement, and remedies for the infringement of trademarks in Nigeria.
Requirements for Registration of Trademark:
- Applicant’s details (i.e., name, signature, nationality, and address).
- Details of the trademark.
- A representation of the mark.
- The classification of goods and/or services (Nigeria uses the Nice Classification of Goods and Services).
- A signed Power of Attorney
Procedures for Registering a Trademark:
- Availability search: The first step is to conduct an availability search at the Trademark Registry to ensure that there are no marks similar or in conflict with the proposed mark.
- Application: If there are no conflicts, an application for trademark registration is filed at the Trademark Registry. After submission of the application form and payment of the necessary fees, the Registrar issues an Acknowledgement Letter confirming receipt of the application.
- Acceptance: Where the application is approved on the grounds that the mark is distinctive, a Letter of Acceptance will be issued within one to three months by the Registrar of Trademarks.
- Publication and Certification: Upon the acceptance of the application, the Registrar ensures the notice of the application is published in the Nigerian Trademark Journal. The purpose of this publication is to notify interested parties who may have objections to the application. The opposition period is two months from the date of publication. Where there are no objections or where an objection raised has been upheld, the Applicant may proceed to make an application for the issuance of Certificate of Registration and subsequently, a Certificate of Registration would be issued by the Registrar of Trademarks.
A trademark once registered is valid in Nigeria for an initial period of 7 years in the first instance and subsequent renewals are valid for 14 years.
Trademark Infringement
A trademark is infringed when a person without consent from the trademark owner uses the mark or an identical mark in a way that is likely to deceive the public or cause confusion. Where such rights are infringed upon, the proprietor can institute an action in court for the infringement of such trademark. The court with jurisdiction for trademark proceeding in Nigeria is the Federal High Court. The burden of proof lies on the Proprietor of the trademark to show that his right has been infringed upon. Section 5 (2) Trademarks Act provides that:
“without prejudice to the generality of the right to the use of a trade mark given by such registration as aforesaid, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using it by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered.”
The owner of an unregistered trademark on the other hand may institute an action for passing off where there is an infringement.
Enforcement of Rights and Available Remedies
The owner of a registered trademark can enforce his rights through the any of the following options:
- Filing an opposition within 60 days of the publication in the Trademark journal against the registration of an identical or similar trademark. This is done by filing a Notice of Opposition, the Respondent is required to file a counter statement and the matter will be determined by the Registrar as to whether registration of the mark will be entertained or not. The notice must be in writing and must contain the grounds for the opposition.
- Making a formal application to the Trademark Registrar for the cancellation of the trademark. This however should be supported with evidence of prior registration of the mark by the proprietor.
- Sending a cease and desist letter to the infringer to inform him of the trademark that is being infringed and warning him to stop further violations of the mark. Where such infringer refuses, a legal action can be instituted.
- Apply for a search and seize order where the infringement is known to the proprietor of the Trademark. It allows the owner the opportunity to enter the premises of the infringer without notice to seize all infringing goods.
Where the owner of a trademark commences legal action for the enforcement of his exclusive right to a trademark, the following remedies may be available through the courts:
- The owner of the trademark can seek damages for compensation for losses suffered in relation to infringement of the trademark especially when such infringement impacts negatively on the owner’s business. The evidence must show a direct causal relationship between the infringement and actual harm.
- Injunctive reliefs may be sought and granted. The court could prevent the infringer from further using the mark or may restrict usage of the mark to certain areas or impose certain conditions for its usage.
- An Anton Pillar order can be sought to give access to the owner to enter the premises where the infringed goods are kept and take possession of it.
- The court can also grant an order of account of profit to recover all the profits made by the infringer from the unauthorized use of the Trademark where such act amounts to gross loss of profit on the part of the owner.
Conclusion
The benefits of trademark registration generally and in Nigeria cannot be overemphasized. The certificate of trademark registration issued by the Registrar, is irrefutable evidence of registration of a mark and confers a right on the owner to use the trademark to the exclusion of others. Not only is a registered trademark protected under the law, but it also protects the identity and goodwill of the brand. The owner of a registered trademark can equally assign or transfer his trademark to an individual or corporate entity and generate revenue from it. Any infringement of the registered trademark could be met by an enforcement action and the registered trademark owner could get injunctive order or damages against the infringer.
Please note that the contents of this article are for general guidance on the Subject Matter. It is NOT legal advice.
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