Trademark registration is a major aspect of the protection of intellectual property (IP) right. It is a critical aspect of branding and business identity. It could be a unique symbol, word, phrase, or design that distinguishes one business from another and identifies its products or services.
In Nigeria, trademarks are protected under the Trade Marks Act, which regulates the registration and use of trademarks in the country. By registering your trade mark, you safeguard your brand and prevent others from using marks or symbols that could harm your business.
This article posits to discuss, the legal framework of trademarks in Nigeria and in cases of opposition or refusal of trademarks, how one can contest unjustifiable opposition or appeal the erroneous refusal, as well as the court of competent jurisdiction that can entertain the matter.
According to the Act, particularly section 9 of the Trademark Act 1990, A trademark can be registered if it is distinctive and not likely to deceive or confuse the public. The mark can consist of any combination of words, letters, numbers, drawings, and other symbols. Registered trademarks can be renewed indefinitely, as long as the owner continues to use them.
The Nigerian government authority responsible for trademark registration is the Commercial Law Department Trademarks, Patents and Designs Registry in the Federal Ministry of Industry, Trade and Investment. The Registry requires that an applicant submit an application for trademark registration, detailing the trademark to be registered and the goods and services it covers.
The application must include a representation of the trademark in the form of a graphic or image. The application will also require the name and address of the applicant, as well as a statement of the applicant’s intention to use the trademark in commerce.
Once the application has been submitted to the Registry, it is examined to determine if it meets the requirements for registration. If it does, the trademark will be published in the Nigerian Trademarks Journal for opposition by third parties for a period of two months. If no opposition is received during this time, the trademark will be registered and a certificate of registration issued.
Trademark infringement is a civil offence in Nigeria and can be addressed in court. The owner of a registered trademark can bring an action against any party that uses a similar or identical trademark for similar or identical goods or services without permission.
This is however not the only legal hassle associated with trademark registration. There are instances where, even before a trademark is registered, there will be disagreements concerning either an opposition raised or a rejection of the registration
WHEN CAN IT BE SAID THAT A TRADEMARK IS REFUSED?
Registration of a trademark can be refused in several instances, such as where
- The chosen trademark is too similar to an existing trademark or business name.
- The trademark is too generic or descriptive and does not have a unique identifier.
- The trademark contains prohibited or offensive words or phrases.
- The trademark is deceptive or misleading in nature.
- The trademark is too similar to a well-known or famous trademark that it may lead to confusion.
- A trademark application may also be rejected due to a lack of documentation or improper application submission.
In Nigeria, the process of registering a trademark can be a long and detailed one. It involves several steps and can take up to several months or even years due to bureaucracy and administrative procedures. Yet, sometimes a trademark application may be denied, causing frustration and confusion for the applicant. In such a situation, it is important to know how to contest the rejection where it is not justifiable.
The first step to contesting the refusal of trademark registration is to understand the reasons for the denial. The Nigerian Trademarks Act outlines the conditions for obtaining a trademark registration, as seen in sections 17-25 of the above Act, and if your application has been denied, it’s typically due to non-compliance with the Act.
Additionally, the registration may be refused if the trademark is deemed to be offensive or contravenes public order or morality. If you have been refused registration due to a non-compliance issue, you must resolve the issue first.
This may involve amending the trademark application to meet the requirements of the Trademarks Act or providing additional supporting documentation. Once you have resolved the issue, you can submit a new application for trademark registration.
If the refusal is due to a perceived conflict with another trademark, you may need to provide evidence that your trademark is not infringing on the other trademark. This may involve obtaining a detailed analysis of the two trademarks and how they differ. If you are unable to resolve the issue with the other trademark owner, you may need to enlist the services of a lawyer or intellectual property specialist to guide you through the process of appealing to the Registrar.
To appeal the refusal of trademark registration, you will need to follow the proper procedures established. This typically involves completing an appeal form and providing supporting documentation to support your appeal. Submit a letter of protest (in cases of unjustifiable opposition to a published trademark) or an appeal to the Registrar of Trademarks. In the letter of protest, the applicant may draw attention to any misinterpretation of facts, inconsistencies or errors made during the examination.
A letter of protest is a statement of additional facts that were not included in the initial application or evidence that the trademark is indeed distinctive enough for registration. It is important to compile any relevant information supporting the trademark such as advertisements, industry usage, trade figures, sales, and other data as evidence.
The appeal process can take several months, but it should be appealed within two months of denial. It may require the assistance of an intellectual property lawyer to advocate on your behalf. One can also Consider Alternative Dispute Resolution (ADR): If the Trademark Office rejects the appeal, an alternative dispute resolution mechanism such as arbitration, mediation, or conciliation may be resorted to. ADR is an effective way to resolve disputes as it’s faster, less formal, and less expensive than going to court.
Where any of the above-mentioned procedures fail, the next resort will be instituting a case in the Federal High Court, where appeals from the registrar lie. An appeal from the Federal High Court lies in the Court of Appeal, and then to the Supreme Court as the court of last resort.
In conclusion, a registered trademark is an invaluable asset for any business operating in Nigeria. It provides legal protection, brand recognition, and value proposition necessary for achieving success and growth in a competitive market. The registration process involves several steps, but with the right professional guidance, it can be completed without much of a hassle.
Thankfully, the whole process is currently being digitalized to enable online filing from the comfort of your location. Now you know that you do not only have the right to enforce your rights if your registered trademark is being infringed upon, but you also have the right to contest the refusal or opposition to your trademark registration for unjustifiable reasons. Feel free to reach out for more information where necessary.
By: Emediong Bassey Esq.