Trademark registration in Nigeria has become a trending topic in recent years due to sustained interest by businesses, brands and individuals in protecting their names, identity and distinguishing their goods and services from that of others. This article is a comprehensive guide into trademarks applications in Nigeria. Companies have noted the importance of all-round brand protection, a commendable attribute.
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What is Trademark?
A Trademark is a distinctive sign or mark that is used in relation to goods and services which helps to distinguish the products and services of one entity from that of another entity.
Applicable Law for Trademarks in Nigeria
The laws that governs Trademarks in Nigeria are:
- The Trademarks Act.
- The Trademarks Regulation, 2004.
Trademark Registration in Nigeria
Trademarks can be easily registered in Nigeria so that owners of Marks can easily distinguish their goods and services from that of competitors and also adequately protect their brand image from unauthorized use.
Classes of Trademarks in Nigeria
What types of Marks are Registrable?
Marks are considered registrable in Nigeria if they contain these essential particulars:
- Any distinctive mark;
- The name of a company [eg: Anthony Baig Ltd.], individual, or Firm, which is represented in a special or particular manner;
- An invented word or invented words;
- A word that has no direct reference to the character or quality of the goods and which is not a geographical name or a surname.
Non-Registrable Marks that cannot be registered as Trademarks in Nigeria
There are certain Marks which are classified as unregistrable and these include:
- Any mark which, if registered, is likely to deceive or cause confusion in the minds of people;
- Any scandalous design.
Does a Trademark Enjoy Global Protection?
Trademarks cannot enjoy global protection as they are territorial in nature; granted on a country-by-country basis. Thus, Trademarks registered in Nigeria enjoy protection only in Nigeria and vice versa. There are however, systems and Protocols that allow for an applicant/trademarks owner to enjoy protection of their registered Mark in more than one territory. An example is the Madrid System, administered by the World Intellectual Property Organization [WIPO]. Nigeria is not a party to the Madrid System, though, since the country is yet to accede to the Madrid Protocol.
Government Agency Responsible for Trademark Registration in Nigeria
The Nigerian Government agency responsible for Trademark Registration in Nigeria is the Trademarks, Patents and Design Registry; Commercial Law Department, Ministry of Trade and Investments, Abuja, Nigeria. The agency is under the leadership of the Registrar of Trademarks who is responsible for approving registrations and otherwise.
Requirements for Trademark Registration in Nigeria
- Name, address and other personally identifying information of the applicant of the Trademark
- Contact details of the applicant
- Power of Attorney which authorizes an agent/lawyer to handle the registration on the applicant’s behalf. Note that a lawyer can assist in preparing the Power of Attorney and same does not need to be notarized.
- A copy of the device, logo, word or words [and these could be real words and completely contrived words] which the applicant proposes to register as a Trademark
- Necessary fees; both Registry fees and service fees for the agent handling the registration.
Cost of Trademark Registration in Nigeria
The cost of registration of Trademarks in Nigeria asides the official fees payable to the Trademarks Registry for official filings is largely dependent on the accredited Trademark Agent or legal practitioner(s) handling your application Brief. Be that as it may, the overall cost payable is around $600 to $1000USD, depending on the agent/legal practitioner handling the brief.
Steps to be taken for Trademark Registration in Nigeria
There are numerous steps to be taken in order to obtain trademark registration for a mark from point of application to grant, all of which are outlined below:
- Choose your accredited agent/legal practitioner: Given the fact that in Nigeria applicants cannot apply for Trademark personally but rather through an accredited agent or lawyer, this, in our opinion, is the appropriate first step to take when trying to register a Trademark in Nigeria. Upon choosing your agent, issue a Power of Attorney to them [notarization of the Power of Attorney is unnecessary];
- Search: Conduct an availability search [preliminary searcsh] for that particular mark to be sure that same has not been registered already to another entity or person, and that there is no other mark confusingly similar to the mark you intend to register;
- Application-Acknowledgement: Fill the necessary prescribed form for the Trademark application. Provide all necessary details required to be provided in the prescribed form, including the applicant’s name, type and description of the Mark, classes you are applying to register the Mark under, et cetera. When the prescribed form has been filled and all preliminary requirements met, submit the application and pay the prescribed application fees. Upon payment of prescribed fees, an Acknowledgment Letter will be issued by the Registry to show that the application was successfully lodged with the Registry.
- Examination: The Registrar will examine the application to ensure that the mark is distinctive enough to warrant registration and to ensure compliance with extant laws and Regulations guiding trademark applications.
- Publication: If the Registrar determines that the Mark is distinctive enough, and does not fall within prohibited Marks that cannot be registered, and that all preliminary requirements were met, then the Registrar will cause for a publication in the Nigerian Trademarks Journal. The aim of this publication is to give members of the public the opportunity to note the Mark being sought to be registered and to enter their opposition to the application, if any. It should be noted that any opposition filings in respect of an application made to the Registrar shall be made within two months from the date of the publication in the Trademarks Journal.
- Opposition Proceedings [if any]: Within a period of two months from the date of publication of an application in the Trademarks Journal, any party who intends to oppose the application shall file their opposition to that application in Form 6. If an opponent is opposing a proposed registration on the ground that the mark resembles marks already on the register, the numbers of such trademarks and the numbers of the Journals in which they have been advertised shall be set out; and the notice shall be accompanied by an unstamped duplicate which the registrar will send to the applicant.
- Certificate of Registration: Where registration is not opposed within the prescribed period from the date of publication in the Trademarks Journal, the Registrar shall, within any time from the expiration of that two months’ publication, enter the Trademark in the Register. The Registrar shall enter such in the Register upon satisfaction that all fees have been paid and any and all other requirements adequately met by the applicant.
How Long Does It Take to register a Trademark in Nigeria upon a Trademark Application?
A fresh Trademark application process from point of application to approval, to publication and entry of a Trademark in the Register of Trademarks will take on average, a period of six months to twelve months; that is for applications that are unopposed. In instances where an application is opposed, the registration process may take longer period, even if the application is subsequently refused by the Registrar.
Who can Apply for Trademark Registration in Nigeria?
An individual/applicant cannot personally apply for Trademark registration in Nigeria. The Registry requires an applicant to file their Trademark application through an authorized agent or legal practitioner and the applicant is to show evidence of compliance through the [non-notarized] Power of Attorney donated to the authorized Agent or Trademark Attorney for their application for Trademark Registration in Nigeria.
Duration of Trademarks Registration Procedure in Nigeria
There is no specific, set duration for trademark applications in Nigeria. Generally, the duration of a trademark application for registration from search to issuance of certificate and publication takes a period of around six to twelve months; and this is in cases where the trademark application for registration is an unopposed application. In instances where an application is opposed, the application opposition phase will elongate the process, and, in cases where successfully opposed, the application will be refused.
Assignments & Recording of Trademarks in Nigeria
A Trademark owner can choose to assign their registered Trademark to another entity or persons; said Trademark can also be transmitted. Once done, an assignee and the registered proprietor of the Trademark can make a joint application to the Registrar to register the interest of the Assignee in the Mark for Recording in the Register. This is not mandatory, though, as the assignee can, on their own, make an application to the Registrar to register their interest in the Trademark.
Can One Trademark cover multiple goods and services?
No, it cannot. Each Trademark filing covers protection in only one class out of the forty-five classes which it was filed for and the trademark protection is extended only to the products or services covered under that class. If a Trademark owner in Nigeria is desirous of having one Trademark cover more than one class, or at least multiple classes, then they have to file for additional classes for the additional products or services they want their Trademark to cover in each class.
While Filing for Trademark for a logo, is it better to file in colour or without colour?
A Trademark applicant has the choice to make their application for trademark protection of their goods or service marks either in specified colour or in black-and-white. However, it should be noted that if filed for in colour, then the Trademark protection will only cover the specific colour combination/arrangement for the set of colours in the mark they filed for and they are thus limited to the specified colours. Conversely, if filed for in black-and-white, then the trademark protection will cover all colours for that mark as same is deemed registered without limitation. In other words, it is always better to make a Trademark application in black-and-white as opposed to colour. There are no restrictions, though. An applicant can file for coloured marks if they so wish.
Lifespan of Trademarks and Renewal
When a Trademark is registered in Nigeria and a certificate of registration issued in respect of same, then that Trademark has a lifespan of seven years from the date of registration. It is however renewable for every fourteen years thereafter, and the Trademarks owner can so renew the Trademark for another period of fourteen years from the expiration of the original duration of seven years of protection if the Trademark owner so wishes.
Benefits of Trademarks Registration in Nigeria
- Exclusivity of use of the Mark for the classes they are registered under.
- Ability to sue infringers for both passing off and trademark infringement.
Trademarks Enforcement and Trademark Infringement Actions
Where a trademark owner becomes aware of an infringement of their registered Trademark or aware of a potential infringement of their trademark, such owner can take the following actions:
- Issue cease-and-desist letters through their attorney
- Commence Court action for search-and-seize orders
- Licensing and Settlements: Trademark owners can license their trademarks to others for commercial exploitation in return for economic royalties paid to them for such exploitation. Such licensing arrangements can also culminate through litigation, as part of settlement in Trademark infringement lawsuits instituted against infringers.
Next Steps
If you would like additional information on trademarks in Nigeria, or you are interested in registering a trademark in Nigeria, we invite you to contact our Trademarks department on contact@kabbizlegal.com Kabbiz Legal & Advisory is a specialist law firm in Nigeria dedicated to Intellectual Property and related practice areas.
To learn more about our overall Intellectual Property practice which includes our Trademarks, Patents and IP Licensing practices, we invite you to download our IP Brochure by clicking here.
If you wish to learn more about trademarks and other intellectual property-related areas in Nigeria, you can listen to our podcast here or visit our YouTube channel here.
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