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:
- 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.)
- 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.
- 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.
- 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:
- 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.
- 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:
- 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.
- 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.
- 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.