A Brief Look at the Provisions of the Nigerian Trade Marks Act.
This month we are providing a quick overview of some of the most salient provisions of the Trade Marks Act 1990, Nigeria.
Trade Mark Register divided into two parts:
PART A Marks registered should be distinctive.
PART B Doesn’t have to be distinctive when registered but should be capable of becoming distinctive in use.
Rights of registered owners of Marks in Parts A or B are virtually the same. However, in actions for Infringement of Marks registered in Part B no injunction or other relief will be granted to the Plaintiff if the Defendant can establish to the Court’s satisfaction that its use is not likely to confuse or to lead to the belief in a connection in the course of trade between the goods and some person entitled either as proprietor or as a registered user to use the trade mark.
For the purpose of registration of trademarks, Nigerian law classifies goods into the forty-five International classes of the Nice Classification.
Classes 1-34 covers Goods and Classes 35-45 covers Services.
Multi-class applications are not allowed so a separate application must be made for registration in each of the relevant classes.
Service Marks are registrable.
On the 19th of April 2007 the Honourable Minister for Commerce, via Regulation (Pursuant to section 45 (1)(b) of our Trade Mark Act CAP 436 Laws of the Federal Republic of Nigeria 1990), ordered that the class of goods under which Trade Marks may be registered in Nigeria shall now be extended from the current 34 classes to 45 classes, according to the manner and structure of the 9th Edition of the Nice Classification of goods.
Interestingly, although the Order does not provide for the registration of Service Marks in its real sense what it does is to extend the classification of goods and in essence it regards goods under classes 35 to 45 as “intangible goods”. Eventually we foresee a number of difficulties with this approach, but however expect that Service Marks shall be introduced into Nigerian Law by the more appropriate mode of introducing an enabling act or better still creating a fresh Trade Mark Act.
Duration of initial Registration: 7 years
Renewal Period: 14 years
Notice of Application: Published in Journal
Period of Opposition: Two months after publication (Grounds of Opposition)
Counter-Statement:- Filed within one month after receipt from the Registrar of grounds of opposition.
Failure to file counter-statement within prescribed time will result in the abandonment of the application.
Registrar may request security for costs of the proceedings from either person opposing or applicant sending counter-statement. Failure to provide said security may also result in the opposition or the application to register being abandoned.
Registrar’s decision on Opposition hearings can be appealed to the court.
The onus of proof that there is no reasonable probability of deceiving or causing confusion is on the applicant for the registration of a trade mark.
Applications not completed within 12 months from the date of the application may be treated as abandoned subject to the giving of notice of non-completion by the Registrar.
Trade Marks can be removed from the register on action by the Registrar or by application from a third party on the following grounds:
(i) There was no bona fide intention on the part of the applicant for registration to use the mark and that there had, in fact, been no bona fide use of the mark up to one month prior to the date of the application for removal of the mark;
(i) That one month prior to the date of the application a continuous period of at least five years had elapsed during which the registered mark had not been used by the registered proprietor.
The time frame within which a mark must be used in order to avoid cancellation runs from:
- the date of issuance of the certificate of registration.
- Counting from the above date, to avoid cancellation for non-use, the mark must be used within: five years.
(2) Failure to pay Renewal Fees
What is required to apply for Trade mark registration in Nigeria
Any person who claims to be the proprietor of a mark may make application to the Registrar of Trade Marks for its registration. Nigeria follows the international classification of goods. An applicant must provide the following:
- Name and address, nationality and business of the applicant.
- List of goods for which application is sought; an applicant may specify the class or classes in which application is to be made. Where the Trade Marks contain words in a language other than English, the English translation of the word must be filled with the application
[Multi class applications are not permitted so application must be made in each class for which protection is required]
- 15 (fifteen) durable prints/representations (bromides) of the Mark particularly when the mark is a device mark or colour is claimed
- Authorisation of Agent Form (Power of Attorney) simply signed by the applicant or its authorised agent where the applicant is a corporation. There is no need for legalisation or notarisation.
- Evidence of payment of the filing fees.
If you have any questions on Trade Mark Law in Nigeria, A.A. Tejuoso & Co. can help. Feel free to contact us and see how we can be of assistance to you.