USE AND NON USE: THE NIGERIAN TRADE MARKS ACT.
When a company or individual decides to register a Trade mark there is an expectation in Law that the trade mark will be used by that company in the “course of trade”.
In Nigeria, the Trade Marks Act prescribes a period by which, if a mark is not used, it may become subject to removal.
Removal of a registered trade mark can be made by an application from any concerned person. The application can then be made either to the Nigerian Court or, to the Registrar provided that there is no pending court action related to the trademark.
If a concerned party applies to remove a registered trade mark he or she must prove either one of the following:
1. That the trade mark was registered without a bona fide intention by the applicant that it should be used in relation to the goods for which it is registered and that there has in fact been no bona fide use of the mark by any proprietor up to one month before the date of the application to remove the mark; OR
2. That a continuous period of five years or longer has elapsed during which the mark was registered and during which there was no bona fide use by the proprietor of the mark in relation to the goods for which it was registered.
In order to fend off an application to remove a trade mark based on Non-use, Proprietor must ensure that they are actively using their marks in the jurisdiction in relation to the goods or services for which they have registered them. A proprietor cannot simply assert Use. He must be able to prove it. There must be clear evidence showing that the mark has been used in the marketplace in relation to the goods. For example, television or print ads using the mark might be able to prove the use of the mark.
Bear in mind that use needs to be of a commercial type and must be in the country in which the mark is registered. You cannot defeat a claim of Non – Use in Nigeria by proving that the mark has been used in neighbouring Chad, Niger or Cameroon. Further, it would be best to show that the mark has been used in more than a token fashion so that where, for example, the mark is in relation to food, the frequency and amount, would be a significant consideration. The sale of a box of olive oil bearing the trademark over the five year period is hardly likely to convince the Registrar or Court that the mark was being used in a genuine commercial sense.
It should also be noted that where a mark is registered with a wide specification of goods and/or services the Registrar can make a determination that the mark has been used in relation to only some of the goods in the registration but not all. This would result in the registration being preserved in respect of the goods for which there has been genuine use but cancelled in respect of the remaining goods. Trademark owners must therefore seriously consider whether or not they will be using their mark in respect of all the goods or services for which they apply for registration.
Registering a trademark is an effective way to ensure that your goods or services can be identified by consumers in the marketplace.
However, a trademark registration should not be used merely to block a competitor where there is no intention to use a mark in the course of commerce. Nor should prospective trademark owners be barred from using marks which are not actively being used. The Use and Non-Use provisions within the Trade Marks Act seeks to ensure that the trademark register contains marks which are being actively and genuinely used in the course of business and trade in Nigeria.
If you would like to discuss any of the issues raised please contact us.