Trademarks in Nigeria
Want to learn about trademarks in Nigeria? Hang on!
Ever heard of Intellectual property (IP)? Trademarks are a principal part of intellectual properties. Like other IPs, trademarks are intangible properties; creations of the mind.
A trademark is a word, sign, symbol, logo, device, slogan etc. capable of distinguishing the goods or services of an enterprise from the other. They protect against confusion in the identification of products.
Trademarks are protected by Intellectual Property Rights. These rights, generally speaking, are framed to preserve the sanctity of creativity. Therefore, trademark rights help to legally ensure that your word or device is not reproduced by an infringer.
In Nigeria, trademark is chiefly regulated by the Trade Marks Act. This statute specifies the operation of trademarks in Nigeria, from registration to rectification, to transmission etc. Other laws that regulate trademarks in the Nigerian milieu include the Merchandise Marks Act (Cap M10 LFN 2004), as well as the Nigerian Trade Mark Regulations 1967.
In the case of Fedoro Limited & Anor v. Ibeto Industries Limited (2003-2007) 5, I.P.L.R page 158, 159, Musdapher, J.S.C. held thus, “The essence of a Trade Mark if that it indicates a connection in the course of trade between the goods and some person having the right to use the same. A Mark, in this connection includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof;
“A Trade Mark on the other hand, is a Mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods and some persons having the right either as a proprietor or a registered user to use the Mark.”
What can constitute a Trademark?
The Trade Marks Act has specific provisions relating to what can constitute a trade mark.
Thus, not every phrase, word, logo or slogan can simply become a trademark. The central attribute of every trademark is distinctiveness.
In other words, in order for a sign to constitute a trademark, it must be prima facie distinctive. Remember that the main focus of trademark rights is to eliminate confusion as to what is what; or who owns what.
Trademarks, in Nigeria, are registered at the Nigerian Trade Marks Registry. The trademark registrar acts on the authority of the Minister of Industry, Trade and Investment. In fact, the Trademarks, Patent and Design Registry is under the Commercial Law Department of the Federal Ministry of Industry, Trade and Investment.
Apart from being distinctive, a word to be registered as a trademark must have no direct reference to the character or quality of the goods. It must not be a geographical name or a surname. It cannot also be contrary to law, morality, or be scandalous.
Largely, a word that is commonly used in relation to a trade cannot be registered for a product in that trade. For example, the word ‘Milky’ may not be trademarkable for a milk product. However, ‘Milky Dem’ may be trademarked for a sanitary pad.
Trademark Rights in Nigeria
Trademark rights may arise in Nigeria based on either use or registration.
Through frequent and popular use of an unregistered trademark, a user can acquire goodwill in that mark. In such a case, such a user can enjoy the right of passing off, as may be held by a court of competent jurisdiction. For a claim of passing off to succeed, the user must show that he has acquired goodwill in the mark and that the ‘infringement’ has led to injury.
However, the user of an unregistered trademark cannot bring a successful action in case of infringement, or claim damages for his loss.
A registered trademark enjoys full rights under the law. It can be protected by the Court, assigned, or willed.
In Patkum Industries Ltd. v. Niger Shoes Manufacturing Ltd (1988) 5 NWLR (part 93) 139 at 141 and Dyk Trade Ltd. v. Omnia (Nig.) (2000) 12 NWLR (Part 680) 1 at 9, it was held that Trade Mark when registered, entitled the proprietor to sue or institute an action for an infringement.
Trademarks Classification in Nigeria
Trademarks are grouped in classes. In classifying trademarks, Nigeria adopts the Nice Classification Scheme. In line with this classification, trademarkable goods and services are divided into 45 classes. The same trademark cannot be registered in the same class.
In the earlier cited Fedoro case, the Court also held that, “An action for infringement will therefore lie where a competitor uses registered Trade Mark in connection with proprietor’s goods for the purpose of competing them with his own goods in the same class. See Bismag Ltd v. Amblins (Chemists) Ltd. (1940) Ch 667.”
Trademark Registration in Nigeria
As earlier stated, trademark registration in Nigeria are done at the Nigerian Trade Marks Registry.
In registering a trademark in Nigeria, the involvement of a lawyer or an accredited agent is well advised. There are possible issues in the registration that requires specific know-how.
Processes involved in registering a trademark in Nigeria include:
- Searching for the availability of the trademark.
- Applying for the trademark.
- A notice of Acknowledgment from the Registry.
- A notice of Acceptance from the Registry.
- Publication of the Trade Marks Journal.
- (Possible objection(s) to the Certification of a Trademark.)
- Issuance of Certificate of Registration.
An application may be denied by the registry if the word or sign conflicts with an existing one.
Registering a trademark in Nigeria may take around 18-25 months, given there are no objections to or actions arising from objections to the registration. And depending on the professional fee charged by your agent, registration may cost about 100,000 – 200,000 naira.
It is also possible to register a trademark for more than one class. In fact, it is advisable to register your trademark in a class, and in related classes.
In registering a trademark, use or intention to use is also important. However, a trademark may be assigned to a company about to be formed. Its registration can also be accompanied with an application for the registration of a person as a registered user of the trademark.
Lifespan of Registered Trademarks
According to section 23 (1) & (2) of the Trade Marks Act, a registered trademark in Nigeria is valid for seven years. After the expiration of this period of seven (7) years, the registration may be renewed for periods of fourteen (14) years.
Infringement of Trademarks
An unauthorised commercial use of a registered trademark constitutes a trademark infringement. Upon infringement, the owner of the trademark may bring an action against the infringer at the Federal High Court. This is the Court that has competent jurisdiction to hear and determine this issue. The decision of the Federal High Court can further be appealed to the Court of Appeal, and then to the Supreme Court.
On the test for determining whether there was an infringement, the Court in I.T. (Nig.) Ltd. v. B.A.T. (Nig.) Ltd (2009) 6 NWLR (Pt. 1138) 477 held that, “In determining whether a trademark has infringed another, it is the offensive or offending trademark that is considered such that whether the person who sees the offending trademark in the absence of the one breached, and in view of his general recollection, the nature of the offending trademark is likely to deceive him into thinking that the trademark before him is the authentic one.”
Remedies available for trademark Infringement in Nigeria
In a case of trademark infringement, remedies that may be granted by a court in Nigeria are mainly Injunctions and Damages.
As ex parte, the Court may order a preliminary or an interim injunction to restrain acts of infringement pending the decision of the Court. Final injunctions are granted after the trial to perpetually restrain a party from using the trademark.
Damages from infringement actions can also be punitive, special or general.
In the case of CPL Industries Limited v. Morrison Industries Plc (2003-2007) 5, I.P.L.R page 350, Abdullahi Mustapha J. held thus, “Mere proof of infringement entitles the Plaintiff to damages. See Spalding v. Gamage (1915) 31 R.P.C 273. In Draper v. Trist (1939) 56 R.P.C. the Court of Appeal in England held that when passing-off is proved, the Court will infer to some damages to the plaintiff and may award more than nominal damages without proof of special damages.”
Aside from injunctive reliefs and damages, the plaintiff may also be granted an Anton Pillar order in the course of trial, and an order for Account of profits. The defendant may also be asked to pay Costs of the action and solicitors’ fees.
Protecting intellectual properties is very important. No registering a trademark may cause avoidable loss of profit to a business.
See also: Patent in Nigeria
– Trade Marks Act Cap T13 LFN 2004
– Nigeria: Trademarks Comparative Guide by John C. Onyido (S.P.A. Ajibade & Co.)
1Cap T13 LFN 2004
2Cap M10 LFN 2004