A Trademark is a name, logo, slogan, word(s), signature or any other distinctive mark used by a person or business selling goods or services which distinguishes and identifies their goods or services from those of others. A trademark can also be a symbol, image or design located on a brand name, a label, or on a company’s product trademark in Nigeria. The requirements for trademark registration in Nigeria are set out by the Nigerian intellectual property office.
Requirements for trademark registration in Nigeria
For a Trademark to belong exclusively to the owner in Nigeria, it must be registered with the Trademarks, Patents and Designs Registry. This registration gives the owner the right to use the mark and restrict others from using the mark for their personal and commercial use.
Trademark Infringement in Nigeria
When the owner of a trademark who has complied with the requirements for trademark registration in Nigeria, notices that a third party is about to register a mark similar to his registered mark, such owner has a right to oppose the registration of the new mark. This procedure of opposing the registration is referred to as “Trademark Opposition Proceedings”.
Trademark opposition in Nigeria
The following FAQs are important if you are considering a trademark opposition in Nigeria
- Who is Eligible to Carry Out a Trademark Opposition?
Generally, the Law allows any individual or corporate entity who believes that a mark should not be registered, to file a trademark opposition application and you need not have any prior rights to the mark being opposed.
2. When can a Trademark opposition application be commenced?
Any person who desires to file an opposition application, must do so within two (2) months after the proposed mark has been published in the Trademarks Journal.
3. On What Grounds Can I Oppose a Trademark Registration?
An interested party who intends to raise an opposition to the registration of a mark can only bring those oppositions under any of the following grounds:
- Where the trademark is similar or identical to an already existing trademark.
- Where the trademark contains a geographical name.
- Where the trademark contains names of chemical substances.
- Where the trademark is deceptive, scandalous, contrary to law or morality.
- Where the applicant has no intention of using the trademark.
- Where the trademark contains the Nigerian coat of arms or other emblem of authority.
Procedure for trademark opposition in Nigeria
The procedure of trademark opposition can be broken down into the following four (4) steps:
Step 1: Commencement of Opposition
The interested party who seeks to oppose the filing of a Trademark is required to file a Notice of Opposition to the Trademark Registry. The Notice of Opposition must state the grounds for bringing the application and it must be brought within two (2) months of publication of the proposed mark in the Trademarks Journal.
During the proceedings, the party who files a Notice of Opposition is referred to as the Opponent while the proprietor or owner of the trademark is the Applicant; and the opponent must give a copy of the Notice of Opposition to the applicant.
Step 2: Response by the Applicant
When the Applicant receives a copy of the Notice of Opposition, he must respond with a Counter-Statement. This must be filed with the Registry and a copy given to the opponent within one (1) month of the receipt of the Notice of Opposition. This timeframe is definite and cannot be extended for the Applicant.
Where the Applicant fails to file a Counter-Statement, the Opponent can apply for the said trademark to be deemed abandoned, which brings an end to the opposition proceeding and the registration of the mark. Where the application is deemed abandoned, the Registry shall issue a Notice of Abandonment, which in effect means that the Registry cannot proceed with the registration of the trademark.
Step 3: Evidence
Where the Applicant files his Counter-Statement, the Opponent shall file his evidence (relevant documents to prove his case). This evidence is filed in a document called the Statutory Declaration. This Evidence by way of Statutory Declaration is to be filed within one (1) month of the receipt of the Counter-Statement. Unlike the timeframe for the Counter-Statement which is non-extendable, this one (1) month duration is extendable upon application and grant of extension of time by the Trademark Registrar.
The Applicant, upon receipt of the Opponent’s Statutory Declaration, is also required to file its evidence by way of Statutory Declaration within one (1) month of receipt of the Opponent’s Statutory Declaration. An extension of time can also be obtained.
The Opponent also has the right to reply the Applicant’s Statutory Declaration within one (1) month, and where the Applicant needs to respond to the Reply Statutory Declaration, the Applicant can file further evidence in response, with the leave of the Trademark Registrar.
Step 4: The Hearing and Ruling
When all relevant documents have been filed, the Trademarks Registrar then gives notice to the parties of a date when he will hear arguments in respect of the case. The hearing if the case is done in the Trademark Tribunal.
At the close of the case, Briefs of Argument are filed by both parties and they are required to each adopt their Briefs of Argument as their respective arguments in support of their case. After this adoption, the Trademark Tribunal shall then deliver a Ruling.
- Can I appeal against a decision made by the Trademark Tribunal?
Yes you can appeal against any decision made by the Trademark Tribunal. The decision of the Trademark Tribunal is not final. Where any of the parties are dissatisfied with the Ruling of the Trademark Tribunal, they have the liberty to appeal the decision made by the Tribunal.
The appeal against a Ruling by the Trademark Tribunal is made to the Federal High Court of Nigeria.
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