GROUNDS FOR REFUSAL OF A TRADE MARK AND REQUESTS FOR DISCLAIMERS – NIGERIA
In Nigeria an application for the registration of a Trade Mark can be refused by the registrar on either Absolute or Relative Grounds.
The Grounds for the refusal of a trade mark application are set out in Sections 11, 12 and 13 of the Trade Marks Act.
The Absolute Grounds for refusal are as follows:
I. Marks devoid of deceptive character. That is to say the mark does not meet the requirements stipulated by the Act regarding distinctiveness.
II. Deceptive or Scandalous Marks or Marks contrary to law or morality or in any other way not entitled to protection
III. That the mark contains some prohibited words and/or symbols such as names of chemical substances, Coats of Arms, the words “patent” “patented”, “registered”, ”registered design” “copyright” or similar words.
IV. Geographical names.
The Relative grounds for refusal are as follows:
I. Applicant is not the true owner of the mark.
II. The application was made in bad faith.
III. The trade mark is identical or confusingly similar to an existing / prior / pending registration / application or to a famous mark
IV. The mark contains some restricted words and/or symbols. For example, the representations of the Geneva cross and other crosses in red or of the Swiss Federal cross in white on a red background.
Another relative grounds for refusal is where a trade mark contains matter common to the trade or otherwise which is of a non-distinctive nature. The Registrar can in those circumstances require that as a condition of registration of the mark that the applicant accepts a disclaimer.
A disclaimer is requested by the Registrar where the trade mark includes once or more words which are viewed as merely descriptive or generic in relation to the products or services which are being sought to be covered in the trade mark application.
The disclaimer is a statement which is placed on the record and which appears on the registration certificate, when issued, indicating that the owner does not claim any exclusive rights to the disclaimed portion of the mark.
A practical example of how a disclaimer might work is if I were to apply for the mark “Tejulaw Decaf” to cover coffee and teas, a disclaimer of the term “Decaf” will be required. The basis for the disclaimer would be that the Registrar might well argue that the word “Decaf” is a generic word for decaffeinated coffee and thus devoid of any distinctive character and that the word decaf had become customary in the language and established practices of the coffee trade as a reference to decaffeinated coffee such that to allow any one proprietor exclusive rights to use the word to describe its goods would be unfair.
To avoid a provisional refusal for registration of your trade mark intellectual property rights lawyers hired to carefully study the matter on the basis that you must disclaim a portion of the mark thereof we recommend that you should always:
- Use strong words in your trade mark that are not a generic description of your products or your industry.
- Use images that are unique. Do not use drawings that could point to a company selling similar products.
This way you will avoid an office action requesting a disclaimer of a portion of your trade mark.