The Protection of Well-Known / Famous Trade Marks in Nigeria
Trade Mark protection is territorial. By this we mean for a trade mark owner to sue for infringement of his trade mark or to prevent others from registering marks similar or identical to his mark, he must have a valid trade mark registration in the country in which he asserts his rights.
Therefore, the owner of a trade mark registered in Norway but not registered in Nigeria is not capable of suing for infringement of the mark in Nigeria. In order to make the procedure smooth, you can look for a Trade Mark Attorney in Nigeria for better assistance.
In those circumstances, the mark is unregistered in Nigeria and the owner must seek protection in common / general law in an action for Passing Off or, if there are other relevant statutory protections, for instance, Unfair Competition.
The benefits of obtaining a trade mark registration as opposed to relying on actions such as Passing Off are manifold:
- Existing reputation not required for registration or enforcement of the trade mark.
- Registration covers the entire country.
- Registration of the trade mark establishes a presumption of the validity of the trade mark.
- The trade mark does not have to be extensively used or be well known.
- Proof of misrepresentation or goodwill does not need to be established when suing for infringement.
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The exception to the rule concerning the territoriality of trade mark protection in provided in Article 6bis of the Paris Convention for the Protection of Industrial Property and echoed in Article 16 (2) of the WTO TRIPS Agreement.
Both Articles provide for the protection of unregistered well-known foreign trade marks.
The protection affords foreign trade mark owners who have unregistered trade marks that are well known locally, the ability to object to a trade mark that constitutes a reproduction, an imitation or a translation of their unregistered trade mark which is liable to cause confusion in the public.
Of course, for a trade mark owner to avail himself of the protection afforded to a well-known trade mark, he must satisfy the criteria of what is considered “well-known”.
The TRIPS Agreement sets out the following test for establishing what is a well-known trade mark:
The knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trade mark.
The World Intellectual Property Organisation (WIPO) has also set out the following test on assessing whether a mark is well-known:
- The degree of knowledge or recognition of the mark in the relevant sector of the public.
- The duration, extent and geographical area of any
- use of the mark;
- promotion of the mark;
- registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
- The record of successful enforcement of rights in the mark;
- The value associated with the mark.
Whilst Nigeria is a signatory to both the Paris Convention and the TRIPS Agreement, the current Trade Mark Act does not incorporate the provisions of Article 6bis and Article 16(2) of those agreements nor the principle of national treatment set out in Article 3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Consequently, it is our view that local registration of trade marks under the guidance of a Trade Mark Infringement Attorney in Lagos is still the most effective way to protect well-known/famous trade marks from dilution, infringement and, counterfeiting in Nigeria.