Category: General

Trademarks, Patents, and Designs are protected in Nigeria by the Trademarks Registry, Commercial Law Department, Federal Ministry of Industry, Trade, and Investment. The Trade Marks Act (enacted in 1965) and the Trade Marks Regulations are the laws that regulate trademark registration (enacted in 1967).

PREAMBLE

• Nigeria follows the International Classification of Goods and Services since it is a signatory to the Nice Agreement.
• In Nigeria, foreign priority cannot be claimed for trademark applications.
• It is not necessary to have used a mark before submitting.
• Currently, trademark applications can be filed using either the MANUAL or ONLINE filing procedures.
• Only accredited trademark attorneys/agents/individuals/companies can assist trademark applicants with trademark registration.
• A trademark can be registered in either black and white or color. A trademark registered in color, on the other hand, is only protected in color (s) registered, whereas trademarks filed in black and white are protected in all colors of presentation.
• In Nigeria, multiclass filing is not recognized, and each classification of goods and services for which the trademark is to be registered requires a new application. • Documents do not require notarization or consular legalization.

PROCEDURE

The steps involved in trademark registration can be stated as follows:

1. Availability/Clearance Stage: The local Attorney/Agent is given instructions to do a clearance search to see if the proposed mark is available for registration. (This is an optional stage.)
2. Application Filing Stage: The local Attorney/Agent is given instructions to file a trademark application and get it registered at the local Trade Marks, Patents, and Designs Registry. A Power of Attorney form is executed and completed in favor of the Attorney to authorize the Agent to act on behalf of the Trademark Applicant. This enables the Attorney to apply (s), deal with any issues relating to the trademark(s), and receive official papers on behalf of the Trademark Applicant at the Trademarks Registry.

• If the application is filed electronically, an official Letter of Acknowledgment with the official application number and filing date is created instantly from the TM Registry’s site; however, if the application is filed manually, the TM Registry may take days or weeks to provide the same.
• The Trademarks Registry conducts a preliminary search to determine the proposed mark’s uniqueness from previously filed and registered marks. The Registrar provides an acceptance notification if the mark is judged to be acceptable for registration. At this point, the mark has some protection against subsequent applications for identical or similar marks.

3. Publication Stage: A trademark application’s publication/advertisement in the Trademarks Journal is a ‘condition antecedent’ to trademark registration. The delay in publishing applications in trademark journals, without which the application cannot progress to the final stage, is usually what extends the registration duration to years. The PTO’s infrastructure issues and funding constraints had resulted in the publication of Trademark Journals becoming uncommon. However, since November 2017, there have been repeated releases of the Journal, clearing the backlog of submissions awaiting publication unprecedentedly. When a trademark application is published in the Trademarks Journal, there is a statutory time of two months from the publication date in which oppositions to the trademark registration can be lodged.
4. Certification Stage: The local Attorney applies for the Certificate of Registration once an application passes the ‘publishing hurdle’ without any objection received within the statutory deadline for oppositions. The opposition is adjudicated in favor of the Applicant or is withdrawn. The Registrar provides the Applicant a Certificate of Registration with the Registered Trademark No. and the filing date once the trademark is registered. A trademark is considered registered when applying for registration (filing date). The Certificate of Registration will state that the registration is valid for seven (7) years and renewable indefinitely for fourteen (14) year periods.

TRADEMARKS MAINTENANCE

Much more than registering a trademark is required for trademark protection. It is a multi-step procedure, and the Trademark Owner must implement a comprehensive IP protection plan. The following measures are included in the aforementioned IP protection strategy:

1. TIMELY RENEWAL OF REGISTRATION AND USE OF TRADEMARK

Trademark owners should ensure their portfolios are renewed on time by their local trademark agent to avoid their marks being subject to poaching because they have ceased to exist lawfully on the register. If the mark is locally registered but not renewed and not up to date in the Trademarks Register, cancellation procedures to remove the mark and make room for the new Applicant may be commenced.

A registered trademark may be taken off the register regarding any of the goods for which it is registered on an application made by any person concerned if a continuous period of five years or longer has elapsed since the trademark became registered. There has been no bona fide use of the registered mark for one month before the date of the application.

While usage is not a prerequisite for registration or renewal, it may become a critical component in protecting a registered trademark in a non-use cancellation process.

2. ENFORCEMENT OF RIGHTS

Administrative remedies and Litigation

The PTO Opposition and Administrative Hearing Panel is the first forum for resolving trademark issues. In Nigeria, the majority of trademark disputes are decided at this level.

For the following reasons, PTO proceedings are a more appealing remedy for trademark owners:

1. Disputes handled through PTO administrative hearings are less expensive than court action in terms of legal fees and costs, and they usually take 6 to 2 years to resolve. If a trademark issue goes to court, the procedure might take three to ten years to complete if it goes to the appeals stage. On the other hand, Court litigation is a far more expensive choice. Because the PTO is more familiar with relevant PTO processes than the courts, its judgments are more reasoned and consistent with the applicable legal and regulatory environment for intellectual property. As a result, the material presented during PTO proceedings and accepted acts as guidance in later court battles.
2. Importantly, affidavit evidence provided to the PTO through statutory declarations, upon which the PTO bases its ruling, is admissible as evidence in subsequent court litigation on the same subject. The evidence adduced by statutory declaration is based on factual expositions at the PTO level without putting the deponent on the witness stand.

The Federal High Court, on the other hand, is the principal dispute forum for trademark owners who want to file infringement and passing-off lawsuits. Because most trademark challenges are settled at the PTO level, there is a scarcity of IP litigation case law precedents in Nigeria. However, because Nigerian IP rules are founded on British laws, significant legal human resources are available locally to litigate IP matters, and British case law precedents are readily acceptable.

Appeals can be taken to the Court of Appeal and then to the Supreme Court.

3. DUE DILIGENCE

Trademarks Portfolio Maintenance

IP attorneys must maintain effective and efficient docket records to satisfy their clients’ needs to preserve and retain their intellectual property rights. The local PTO’s data preservation and filing methods are not ideal. As a result, files may be difficult to identify or access to handle requests for searches, modifications, assignments, and renewals, among other things. As a result, the IP agent cannot rely solely on the PTO and must maintain a “parallel registry” if he is called upon to help the PTO with docket-record copies of documents.

When a file cannot be found, the Agent must apply for the creation of a temporary file (until the original file can be found), which will require the Agent to provide the Registry with copies of the Agent’s docket-record copies of documents, such as filing receipts, acceptance letters, certificates of registration and renewal, and so on. As a result, IP practitioners who manage big portfolios of trademarks have a strong motive to invest in docket management software.

Trademark owners also play an important role in assisting and equipping their attorneys in this area of trademark management. This is especially true in opposition and cancellation processes, when proof of trademark “use” in the region may be required. As proof, records of prior sales, shipments, or imports of branded items into the region, ads and marketing materials (including virtual ones tailored expressly for the African market), and amounts spent on such promotions would be required. It is simpler for the IP lawyer to assemble his arguments and back them with documentary proof when they have been meticulously kept in trademark holders’ archives.

Trademarks Watch Service

Many trademark owners now maintain ‘watch service’ over their trademarks to ensure that trademark conflicts are settled at the PTO level, thus ‘nipping the problem in the bud’ at an early stage and avoiding high legal fees associated with Litigation. This is preventative action. The Trademark Watch service notifies the trademark owner if a third party attempts to register a mark that is similar or identical to his. Such conflicting trademarks are recognized in the current Trademarks Journal, allowing the trademark owner to file an objection before the ‘window of opportunity (i.e., the two-month statutory deadline for filing an opposition) expires, and the conflicting trademark is registered. Administrative remedies through the PTO are exhausted once a conflicting trademark is allowed to proceed to registration without opposition, and recourse to the courts is required; additionally, the legal right to bring a court action against an offender for infringement is only available to the owner of a registered trademark.

Discoveries and assessments of legal merits

Before entering into a dispute, the IP client should obtain local legal advice on the merits and prospects of their case and examine the relevant facts to support superior title claims. Court action may be a costly choice, unworthy of prosecution if the case prognosis yields less than a fifty-fifty likelihood of success on first evaluation due to the long nature of the procedure in Nigeria.

Since 2021, NFTs have been evolving rapidly as they digitally represent the artists’ works in the metaverse. NFTs are the digital units or metadata of anything, such as images, videos, clothes, shoes, etc., stored using blockchain technology.

NFTs are non-fungible and cannot be interchanged as they should be unique. In the physical world, we could have seen some IP-related or infringement issues over the past years. However, the same issues can also happen when tokenizing the assets in the metaverse. Let us look at the overview of the NFT Hermés case on the MetaBirkins NFTs.

Hermés and the MetaBirkins: An Overview

We all know about one of the most famous luxury brands in the USA, the Hermés. It is a well-known brand for footwear, bags, and accessories. In December 2021, Mason Rothschild, a Los Angeles artist, created NFTs, the MetaBirkins based on the luxury bags of Hermés. The NFTs represent the imagination of how Hermés bags appear if they are made of fur. The Metabirkins are among the highest-selling NFTs on the most extensive NFT marketplace, the OpenSea, and the royalty generated from the NFTs is relatively huge. Soon after the launch, Hermés filed an infringement suit against Rothschild for violating their brand’s trademark protection.

The brand issued a cease-and-desist order and demanded the court to impose an injunction to stop the MetBirkins sales permanently. In compliance with this, the OpenSea platform stopped selling MetaBirkins, but they continue being sold from other market platforms.

The Views of the Parties

According to Hermés, Rothschild has diluted their trademarks over the signature Birkin bags and suspects that in the future, the MetaBirkins NFTs may affect the growth of NFTs owned by Hermés itself. So the brand demanded the profits and royalties earned from the MetaBerkins to be handed over to them. The brand clearly doesn’t authorize any creation or modification of its products by anyone, as trademark rights legally protect them.

However, Rothschild believes his MetaBerkins won’t create customer confusion since his NFTs represent furry bags different from the brands. He also mentioned that his NFTs are not affiliated with the brand. He also added that, apart from his NFTs, there was another inspiration from Birkin named the Baby Birkin, for which there was no dispute between them.

ConclusionNo matter how the world is digitalized, the IP infringement regulations apply to the metaverse too. For any artist who tries to create an NFT in the metaverse, it is always better to carefully check whether their work will cause any infringement issues. Before tokenizing their NFTs, it is recommended to seek an attorney or legal person to check whether their NFTs are unique and cause no disputes with existing brands. Since NFTs will be more prevalent in the future, creators should be more careful while creating NFTs for commercial use.

Trademark registration in China protects your company’s name, symbol, or logo against copying by other businesses. A trademark creates an exclusive right to use the marks owned by the registered proprietor. The protection afforded to trademarks is important because it allows businesses to distinguish their goods and services from competitors.

If you plan to start or expand a business in China, you should know trademark registration requirements. This tremendous population growth has increased the demand for goods and services and created opportunities for businesses of all types. The country has also recently enacted some strict intellectual property laws, which could hinder your business if you are not prepared.

What are the guidelines to take care of before applying for trademark registration?

When registering a trademark in China, you must comply with specific regulations. These regulations vary depending on the type of business you are setting up, but here are five key points to keep in mind:

• Do your research: Make sure to understand all the requirements associated with trademark registration before moving forward.
• File for a Trademark: There are two main ways to obtain a trademark in China: through litigation or by filing an application at the Office for Prioritizing Industrials Patent Affairs (OPI).
• Protect Your mark: Registered trademarks must be protected from infringement by others. You can file a lawsuit or use IP enforcement tools such as cease and desist letters.
• Keep your mark alive: Many trademark protections lapse after 10 years, so updating your registration annually or more often if necessary is important.
• Be cautious about Geographic indications: When registering a geographic indication (GI), comply with specific rules and regulations the Chinese government sets. Failure to do so may result in the rejection of your application.

What documents are required?

A trademark application in China must include the following to obtain the date of filing:

1. A representation of the trademark;
2. A list of the goods and services;
3. The claimant’s information;

A business certificate or passport of an entity, the claimant’s identification document, and a Chinese translation of the document.

Within six months after obtaining the application materials for trademark registration, a trademark application is subject to formal assessment and substantive inspection on absolute and relative grounds. The trademark application is preliminarily approved and published if it complies with the pertinent provisions of the Chinese Trademark Law. Any interested person may submit an opposition against a Chinese trademark application within three months of the publication date.

Conclusion

Trademark registration in China proves an effective means of protecting a business’s intellectual property rights in China. By registering a trademark in China, you will establish legal proof that your intellectual property rights are valid and protect your brand name from any unauthorized use.

We hope this article enlightens you about the need and specifications for trademark registration in China. We, the Brealant, the fastest growing law firm available, provide you with assistance and guidance in acquiring rights on business. For further information, visit our website and discuss all your intellectual property-related questions with our experts.

A trademark is any recognized word, phrase, image, logo, or symbol that distinguishes one product from all others of its kind and does so legally. A trademark acknowledges the company’s brand ownership and serves only to identify a product as its own. Trademarks are considered to be intellectual property regardless of whether they are registered.

Trademarks play a vital role in protecting the goodwill and reputation of a company. They are also integral parts of branding and marketing strategies. It is the best way to create an image of the brand in the conscience of the consumers. In addition, they help companies distinguish themselves from their competitors and promote consumer loyalty.

To know more about a trademark and its process, read the article till the end to find out how to register a trademark in the Philippines.

Why is a trademark required?

Registering a trademark helps prevent others from using your products or services without your permission. Additionally, a business cannot use a mark or brand name identical to one already registered, particularly if the goods or services are similar in appearance, pronunciation, or meaning.

Trademarks serve an essential function in distinguishing products in the economic and legal systems and in shaping the brand’s perception among consumers. They are used to identify and protect design elements and language that identify the creator or owner of a good or service. They could be brand names, company slogans, product names, or corporate logos. Because they both identify and distinguish the source of a service rather than a product, trademarks and service markings are commonly referred to as “trademarks.”

A trademark is a feature that has nothing to do with the attributes of your products or services. It enables your business to distinguish its products and services from those identical to or comparable to your competitors.

Therefore, it should be given top priority by every modern business.

The brand name of your items is protected by intellectual property law through trademarks. It is the name of your business. It is the tagline you employ for your business. It is the logo’s design that you utilize. This is covered by the trademark law subcategory of intellectual property law.

Are you looking for a way to apply for trademark registration online? Then, it is your right place. This page provides a step-by-step guide to getting started with the application process for the Philippines trademark.

The Philippines has been consistently ranked as one of the easiest countries in Asia to obtain trademarks through the WIPO (World Intellectual Property Organization). The country ranks third in terms of overall trademark registrations per capita.

What is the process for filing a trademark?

The IPOPHL will do additional research after applying to see if any other marks are similar. A trademark examiner will next review the application and make any objections or comments in Registrability Reports, to which a response is required within two months.

The next phases of most applications are Publication for Opposition and Declaration of Actual Use. Our office will handle all communications with the IPOPHL, and we’ll get in touch with you when required. On average, the entire process takes six to twelve months.

Here is your guide for trademark registration:

1. File for trademark application: Submit your application for a trademark to the IPOPHL. A list of needs must also be sent. The authorized officer will review the submitted application for authenticity after paying the required amount for the application. After that, you’ll get your application number.
2. Research and evaluation: IPOPHL will do the checking for trademarks in the list of registered trademarks in the Philippines’ official documents to determine if the registered trademark is identical to those already in use or applications similar to those already filed. The typical wait is at least six months, so this will take some time. This procedure includes reviewing your trademark to see if it complies with the laws and standards. In addition to not being overly generic, deceitful, immoral, or scandalous, it should not be comparable to any existing trademarks.
3. Publication of the trademark in the IPO Gazette: The trademark will be published in the official Philippines Gazette if authorized. The publication will raise awareness of the trademark and permits anyone to object to the registration.

Any person or corporation may object if it infringes on a trademark they already own or if they believe it will seriously harm their reputation or operations.

What happens after successful registration of the trademark application?

After Step 3 above, the public has up to 30 days to take action. If no opposition is filed and approved by the Legal Affairs officers, the IPO will issue the Certificate of Registration.

After the first and second publication of Issuance and Opposition, the applicant should file for Declaration of Usage within three years of receiving the issuance certificate.

After the second Publication for Opposition & Issuance of the Certificate, a Declaration of Actual Use (DAU) must be filed within three years of the certificate’s issuance, which takes place within 3 years of the certificate’s issuance.

THE Philippines improved its positioning by three scores in the 2019 release of a record that assesses the activities attempted by nations in securing licensed innovation (IP) rights.

In the Worldwide Property Rights File 2019, the Philippines acquired a score of 5.31, and put 67th among 129 economies, from a year ago’s evaluating of 5.22 and positioning of 70th among 125 nations. Regardless of this, the nation neglected to draw close to the worldwide normal score of 5.72.

The Philippines additionally stayed at the lower quartile in the gathering of Southeast Asian economies, as its assembling opponents stretched out beyond the pack.

Driving the seven Southeast Asian nations incorporated into the file is Singapore, setting fourth generally speaking, to lead Malaysia at 32nd, Thailand at 64th and Indonesia at 65th. Vietnam and Brunei Darussalam finished the territorial rankings at 83rd and 98th, individually.

The Philippines made a major jump in both score and positioning in the IP rights part, tying down a score of 5.7 to put 58th this year, from 5.4 at 62nd in a year ago’s cycle.

“The licensed innovation segment assesses the security of this sort property. Notwithstanding a supposition based measure, it evaluates security of two significant types of protected innovation rights—licenses and copyrights—from a by law and a true viewpoint,” the report read.

Further, the Philippines supported its rating of 6.5—its most noteworthy among the list’s three parts—in close to home property rights, improving its place to 60th, from 63rd, all the while.

Under this segment, the certainty of the individuals in the state’s adequacy to ensure their private property rights is surveyed. The file said a solid property rights system accommodates incorporated exchanges on the vault of property and grants access to the necessary credit to change over property into capital.

Be that as it may, the nation’s legitimate and world of politics got a lower score of 3.7 this year, from 3.8 a year ago. This made the Philippines drop to 102nd, from 95th, in this part.

“The lawful and world of politics part gets a handle on the capacity of a country to uphold a by law arrangement of property rights. It contains four components: the autonomy of its legal framework, the quality of the standard of law, the control of debasement and the security of its political framework,” the report read.

The 2019 cycle of Universal Property Rights List was discharged by Property Rights Union in organization with the Establishment for Financial Opportunity and Negligible Government Masterminds. The Philippines was chosen for the main worldwide dispatch because of the nation’s rising significance, on account of its growing populace and economy.

Manila’s property rights issues likewise mirror the circumstance in many developing economies, for example, recommendations to debilitate IP insurances in the pharmaceutical area, as indicated by Property Rights Union. The gathering said improving property rights assurance system “can expand accessibility of new prescriptions, battle endemic defilement and change the Philippines into a cutting edge and dynamic accessibility.”

Finland beat the list to remain above Switzerland, New Zealand, Singapore, Australia, Japan, Sweden, Norway, Luxembourg and the Netherlands.

In an announcement on Wednesday, Property Rights Coalition Official Executive Lorenzo Montanari focused on property rights are human rights, as well. Without property rights, individuals are controlled by they way they act, talk and take an interest in the economy, he said.

He said when individuals are sure their property is protected—that they can purchase, sell and worth their advantages in a free commercial center—at that point this hopefulness welcomes business enterprise, diminishes debasement, raises metro support, and improves interest in innovative work.

Intellectual Property Office of the Philippines

Trademark Registration in the Philippines