Introduction
Revocation of trademarks refers to the legal process of cancelling or removing a registered trademark from the official Trademark Register by the Registrar of Trademarks or the court. In essence, the registered trademark ceases to enjoy protection under the law and the trademark owner loses the exclusive right to use that mark commercially.
In Nigeria, it is possible to apply for the revocation of a registered trademark based on any of the grounds provided by law and upon satisfaction of some conditions. The main grounds for applying to revoke a trademark in Nigeria are usually for non-use and non-renewal of the trademark.
Section 31(1) of the Trademarks Act of Nigeria, 2004 (the Act) states that a registered trademark can be removed from the Register of Trademarks in relation to specific goods for which it is registered. This removal can be initiated through an application made by any person who establishes sufficient interest to the satisfaction of the Registrar or the court. The Act stipulates various grounds for applying to the Registrar of Trademarks for the revocation of a registered trademark.
Grounds for Revocation of a Trademark in Nigeria
The grounds for revocation of a registered trademark include non-use, non-renewal, failure to observe a condition precedent, where the registration was obtained by fraud, etc.
- Non-use: The Act provides for the revocation of a trademark on the ground of non-use. There are two instances provided by law where a registered trademark can be revoked for non-use. First, a registered trademark can be revoked if the trademark was registered without any bona fide intention by the applicant to use it and there has been no bona fide use of the trademark up to one month before the date of the application for revocation. A person wishing to revoke a trademark on this ground must prove a lack of intention on the part of the proprietor to use the trademark and the fact that no use of the trademark occurred within that time. Second, where up to one month before the date of the application for revocation, the trademark has not been used for a continuous period of at least five years. Thus, the applicant must prove that although there may have been an initial bona fide intention to use the mark in relation to the registered goods or services, but a continuous period of five years and one month has elapsed without any use of the mark in relation to those goods or services.
Exceptions to Revocation on the Ground of Non-Use
The Act provides for exceptions or defences to the revocation of trademarks on the ground of non-use.
- Bona fide Use: If the trademark has been put to use in good faith by the proprietor in respect to the goods for which it is registered, the trademark would be exempted from revocation on the basis of non-use. In order for this exemption to apply, the usage of the registered trademark must be within the relevant period required to bring an application for revocation. This exception does not apply if the applicant who wishes to revoke the trademark on the basis of non-use has been permitted under Section 13(2) of the Act to register an identical or similar mark for the goods in question, or if the tribunal deems it appropriate to permit the applicant to register such a trademark, despite the prior use of the mark.
- Special Circumstances: Special circumstances which restrained the proprietor from using a registered trademark in his trade also constitute an exception to revocation on the basis of non-use. An applicant cannot rely on the ground of non-use if it can be demonstrated that such non-use was due to special circumstances in the trade, rather than an intention to refrain from using or abandoning the trademark in relation to the relevant goods. For instance, if government imposes a ban on a particular industry, such as cryptocurrency, a trademark registered for that line of business may be unusable for the duration of the ban. This scenario would constitute a valid exception to revocation based on non-use, as the proprietor’s inability to use the trademark arises from regulatory restrictions rather than a deliberate choice to discontinue its use.
- Protection for Well-Known Marks: Trademarks that are registered in relation to various classes of goods and are well-known cannot be revoked on the basis of non-use in Nigeria due to their popular status. This applies even if the mark is not used for all the classes of goods for which it is registered. Thus, a highly popular mark may be exempted from revocation on the Trademark Register if the proprietor submits an application and the mark receives appropriate acknowledgment from the Registry as a well-known mark. This provision ensures that trademark rights are preserved under genuine and justifiable circumstances, preventing unfair removal from the register.
- Failure to Observe a Condition Precedent: A registered trademark can be revoked, if it is shown that the proprietor of the relevant mark or goods failed to comply or observe a condition precedent in relation to the trademark. In defence, a proprietor can provide evidence of compliance or fulfilment of the stipulated conditions to avoid revocation of the trademark.
Non-Renewal of Trademark: The registration of a trademark in the Register of Trademarks does not guarantee perpetual protection of the mark. Registration is valid for an initial period of seven years in Nigeria, with the possibility of renewal for subsequent fourteen-year period. The non-renewal of an expired trademark may lead to revocation of the mark upon the application of an interested party. A defence to an alleged non-renewal is a proof that the Registrar did not issue the required statutory notice for renewal.
Other grounds for revocation include giving inaccurate or misleading information regarding a trademark when obtaining or maintaining a trademark registration, where the trademark registration was obtained by fraud, where the trademark is likely to cause confusion, where it is scandalous or contrary to law and morality and where the trademark is found to be infringing on the rights of another party.
Procedure for Revocation of a Trademark in Nigeria
An application for the revocation of a trademark in Nigeria can be made to either the Registrar of Trademarks or to the Federal High Court. Where it is made to the Registrar, it shall be in the prescribed form and accompanied by a statement of the applicant’s interest, relevant facts upon which the case is founded and reliefs sought. Where the applicant is not the registered proprietor of the trademark in question, copies of the application will be provided by the applicant and sent by the Registrar to the registered proprietor. The defendant is entitled to file a Counter-Statement or Defence to the applicant’s claims, to which the applicant may file a Reply if necessary. In revocation proceedings before the Registrar, evidence is typically provided through statutory declarations unless the Registrar directs otherwise. In any case where the Registrar thinks it right to do so, he may take oral testimony instead of or in addition to evidence by statutory declaration. After reviewing the evidence, the Registrar will determine the question between parties, subject to appeal to the Federal High Court. It is important to note that the Registrar may at any stage of the proceedings refer the application for revocation to the court.
An application for revocation is made to the Federal High Court in the prescribed form where a matter is pending before the court regarding a particular trademark. An appeal from a decision on revocation of trademark by the Registrar lies firstly with the Federal High Court, then with the Court of Appeal and finally with the Supreme Court.
In the case of non-renewal of trademark, the Registrar may revoke an expired trademark where the proprietor fails to pay the renewal fee prior to the expiration date or fails to pay the renewal fee with the appropriate surcharge after the expiration date, after the necessary notice of impending expiration has been sent by the Registrar. The Registrar is statutorily required to notify the registered proprietor of the trademark of the impending expiration not less than one month and not more than two months to the expiration date in the first instance and not less than 14 days but not more than one month to the expiration date in the second instance. Where the proprietor fails to pay the necessary fee before the expiration date, the Registrar shall advertise the expiration of the trademark in the Trademarks Journal and shall be free to remove the trademark from the Register where the proprietor fails to pay the renewal fee with any surcharge for late renewal within one month after the advertisement.
Conclusion
Nigerian law allows for revocation or cancellation of trademark on a variety of grounds. These include non-use, non-renewal, obtaining registration by fraud, etc. An application for revocation can be made by an interested party to the Registrar of Trademarks or to the Federal High Court.
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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