CANCELLATION OF A TRADE MARK – NIGERIA
As we have discussed previously, an application to register a trademark is subject to Opposition by third parties.
If a rights holder misses the opposition deadline and is unable to object to the registration of a mark is there any recourse against the mark once it has been registered?
Section 31 (1) of the Nigerian Trade Mark Act prescribes that:
Subject to this and the next following section, a registered trademark may be taken off the register in respect of any of the goods in respect of which it is registered on an application made by any person concerned to the court or, at the option of the applicant and subject to section 56 of this Act, to the Registrar, on either of the grounds set out in subsection (2) of this section.
Whilst Section 31 only deals with removal of a trade mark from the register for non-use, Section 38 of the Act widens the scope for removal of a registered trade mark providing that an application may be made to the Registrar or the court, challenging the validity of an entry on the register of trade marks. The Section also empowers the Registrar or the Court to make an order to expunge or vary the entry if it deems fit.
The position in Nigeria, therefore, is that whilst the Trade Marks Act does not explicitly use the term “Cancellation” the effects of Sections 31, 38 and 56 is to provide cancellation powers to the Registrar or Court.
Cancellation proceedings is a post-registration remedy and as such can only be brought after a trade mark has been registered and cannot be filed before a mark has been duly registered.
Section 38 allows that any person who can establish sufficient interest to the satisfaction of the Registrar of the Federal High Court is able to commence a cancellation proceeding in Nigeria. However, the interest must amount to a legal interest. The party can be either a natural or a juridical person(s).
As with Opposition proceedings, Cancellation proceedings can be brought against a registered trade mark on absolute and/or relative grounds as well as for non-use.
The following are some of the grounds which can be raised in a cancellation proceeding:
I. lack of distinctiveness of the mark.
II. non-use i.e. the mark was registered without any bonafide intention to use the mark and there has in fact been
III. no use of the trademark up to one month before the date of the application or the mark has not been used for a continuous period of at least five years.
IV. the mark is generic, misleading or deceptive.
V. the mark is contrary to public policy.
VI. the mark was registered in bad faith.
VII. the mark is a well known or famous mark.
Finally, it is important to recognize that if a cancellation proceeding is being brought based on absolute grounds that the proceedings must be initiated within seven years of the date of the registration of the trade mark. The exception being that, where the grounds involve allegations of fraud, lack of distinctiveness at time of filing or that the trade mark is contrary to law, morality or is scandalous there is no such limitation. Get your trademark cases checked by intellectual property rights lawyer. Where the grounds for cancellation is based on Non-Use then the application must be filed within a month of the expiration of the continuous five years of non use.