Importance of Trademark Renewals
Trademarks in Nigeria are not permanent; Trademarks are registered for an initial period of seven years in Nigeria, subject to renewal every fourteen years thereafter. In other words, if a trademark owner fails to renew their Trademark after the initial registration/protection period of seven years, then the Trademark will be delisted from the Trademark Register. Trademark renewal is thus very important for trademark owners who wish to maintain their Marks and uphold the legal protection it enjoys after its initial seven-year registration cover. Trademark renewal can be especially important for international businesses operating in Nigeria or plying trade in Nigeria, as brand poachers are almost always on-ground to capitalize on any unprotected elements of a business to swoop in and take advantage whenever and however they can.
Duration of Trademarks in Nigeria and need for Trademark Renewal When Due
When the Registrar of Trademarks approves a Trademark registration for a goods or service Mark in any of the applicable 45 classifications, then such Trademark is valid for only a period of seven years from the time of grant. If a Trademark owner would like to maintain that Mark beyond the initial 7-year protection period, such owner is required to apply for trademark renewal before the expiration of the Trademark protection cover for a period of fourteen years from the date of the original registration or of the last renewal of registration [Section 23, Trademarks Act].  If the proprietor of the Mark fails to comply with the requirements for trademark renewals – including making the necessary application, paying applicable fees – the Trademark Registrar may remove the Mark from the Register.
Trademark Renewal Process, Timeline and Requirements
What is the Timeline for Trademark Renewal Applications?
The law specifies that a Trademark proprietor is expected to make an application for the renewal of their trademarks before the expiration of their Marks, as the renewal of the Mark will be from the date of the expiration of its last validity period. Failure to apply within the prescribe timeline can potentially lead to penalties for renewal, that is the Mark hasn’t been removed from the Trademark Register at the time the proprietor chooses to apply for trademark renewal.
What Documentation and Details does a Proprietor Require for Trademark Renewals?
To apply for trademark renewal, a proprietor should supply the following documents to their Trademark Agent or Firm:
- Certificate of Trademark registration [if they are renewing for the first time since the Trademark was approved] or Certificate of Renewal of Trademark [if they are renewing following a previous renewal for their Mark], whichever is applicable.
- Proprietor details: Name, Email address, contact address, phone number
- Trademark Agent contact details
Consequences of non-renewal of Trademarks in Nigeria
- Lapse of trademark rights: If the owner of a trademark fails to renew their Trademark as and when due, they risk losing their rights to that Mark, and so cannot act on it against third-party infringers of their Marks.
- Potential for removal from the Register: The Registrar of Trademarks can strike off a Mark from the Trademark Register if the proprietor fails or neglects to renew their Trademark within the prescribed timeline or, within the granted grace period for them to renew. Once such Mark is removed from the Register, the proprietor risks losing it to a third-party registration in the future.
- Risk of third-party registrations: If a proprietor fails to renew their Trademark and wait for the Registrar to strike the Mark off the Register, an interested third party can later apply for the registration of the Mark in the future and there won’t be a deterrent to prevent them from registering the Mark as it’s been removed from the Register.
Late Renewal of Trademarks and Restoration of Marks in Nigeria
Although the Trademarks Act prescribes a period within which a proprietor should apply for trademark renewal in Nigeria, there is a grace period within which a proprietor can still apply to renew their Trademark in Nigeria. Thus, even if a proprietor fails to renew their trademark, and same gets removed from the Register, the Mark shall be deemed to still be a Mark on the Register for the next one year following its removal from the Trademark Register. A proprietor can still hasten to renew and restore their Mark to the Trademark Register, upon payment of all applicable penalties for the service.
Additional fees
Waiting for the Trademark to lapse will ground the payment of additional fees during renewal. It is thus advisable to avoid such situation by renewing Marks early.
How we can help
We are one of Nigeria’s foremost IP law firms, servicing international corporations and local entities and serving as the go-between between them and Regulators. We have assisted manufacturers , startups, entertainment companies, and international law firms with their instructions on renewing Marks in Nigeria.
Our intellectual property practice routinely provides specialized guidance to foreign law firms, local entities, proprietors, and international corporations from around the world on IP matters, helping them navigate Nigeria’s regulatory landscape. For guidance from our attorneys, you can contact us at contact@kabbizlegal.com or call +2348064231176 to schedule a consultation.
This article was written as a Thought Leadership post for our Intellectual Property Law practice group at Kabbiz Legal & Advisory.
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