Trade Mark Recordals

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Trade Mark Recordals



For a prospective owner of a Trade Mark the emphasis is usually on securing the registration of the mark.  However, once a trade mark has been registered it is also important to ensure that any changes affecting the registration are duly notified to the Trade Marks office and entered on the Trade Marks Registry. There are practical and legal benefits to doing so as will be discussed.

First, let us start off with the typical changes that can be recorded at the Registry:

A.   Change of Name.
B.   Change of Address.
C.   Assignment

To Record a Change of Name of Registered Proprietor in Nigeria, the following documents are required:

i.   Power of Attorney, simply signed
ii.  Copy of certificate of change of name. In the case where the    certificate is not in English then a verified English translation of the certificate will be required.

To Record a Change of Address of Registered Proprietor in Nigeria, the following documents are required:

i.  Power of Attorney, simply signed.

To Record an Assignment of a Trade Mark in Nigeria, the following documents are required:

i.  Power of Attorney, simply signed.
ii. Deed of Assignment or other instruments of Title. In the case where the Deed or instrument of title is not in English then a verified English translation will be required.

It should be noted that only the assignee (new owner), the assignor (previous owner) or an authorised agent of either the assignee or the assignor can record the assignment of the trade mark at the Registry but it’s always good to take help of intellectual property rights lawyer as they are the subject matter experts in IP law.

An assignment of a trade mark may be with or without the goodwill associated with trade mark. It is however always advisable to obtain the goodwill associated with the trade mark and expressly include this term in the assignment deed. It is also advisable that the assignee ensure the recordal of the assignment as failure to do so might prevent the assignee from taking steps in the future to protect the trade mark as will be discussed shortly.

As previously stated recording changes is practical for a number of reasons:

i.   It is good trade mark practice to keep all the salient information regarding a trade mark current and up to date on the Register.
ii.  Aides the searching of the register.
iii. Potential investors will find it more appealing if a good record of the trade mark is kept.

But there are also legal implications to the failure to record certain changes on the Trade Mark register.

For example, in the case of an assignment of a trade mark, if the assignment is not recorded at the Trade Marks registry and the trade mark is infringed by a third party the assignee would not be able to sue for infringement as only the registered proprietor as recorded on the register is able to initiate infringement proceedings.

 

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