TRADEMARKS FILING AND PROSECUTION NIGERIA
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Nigeria IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Nigeria IP Office. In Nigeria, trademark protection is granted according to the provisions of Trade Marks Act (Chapter 436), Nigeria.
Trademark in Nigeria may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Patents & Designs Office Commercial Law Department Federal Ministry of Industry, Trade & Investment, |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | NO |
| Multi class system | NO |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 07 years from the date of application. |
| Renewal term | 14 years |
Trademark searches in Nigeria
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Nigeria can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Nigeria to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Nigeria.
Filing trademark applications in Nigeria
A person may file single class trademark application in Nigeria.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Nigeria
Ordinary trademark applications filed in Nigeria are applications without claiming any priority.. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Nigeria /Convention trademark applications Nigeria:
A priority trademark application may be filed in Nigeria. A priority trademark application should be filed in Nigeria within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Nigeria within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Nigeria follows the nice classification of classes. Intellectual property office of Nigeria uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Nigeria
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds (conflicts with an earlier, pre-existing right) of refusal.
11. It shall not be lawful to register as a trade mark or part of a trade mark –
(a) any matter the use of which would, by reason of its being likely to deceive or cause confusion
or otherwise, be disentitled to protection in a court of justice or be contrary to law or morality; or
(b) any scandalous design.
12. (1) Subject to this section, no word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation; and any such registration in force at the commencement of this Act or thereafter shall, notwithstanding anything in section 14 of this Act, be treated for the purpose of section 38 of this Act as being an entry made in the register without sufficient cause, or any entry wrongly remaining on the register, as the case may require.
(2) The foregoing subsection shall not apply in relation to a word which is used to denote only a brand or make of such an element or compound as made by the proprietor or a registered user of the trade mark as distinguished from that element or compound as made by others, and in association with a suitable name or description open to the public use.
13. (1) Subject to the provisions of subsection (2) of this section, no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent use, or other special circumstances which in the opinion of the court or the Registrar make it proper so to do, the court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the court or the registrar, as the case may be, may think it right to impose.
(3) Where separate applications are made by different persons to be registered in respect of the same goods or description of goods as proprietors respectively of trade marks that are identical or nearly resemble each other, the Registrar may refuse to register any of them until their rights have been determined by the court or have been settled by agreement in a manner approved –
(a) by the Registrar; or
(b) by the court on an appeal from the Registrar.
Trademark Opposition in Nigeria
Any interested person, within 2 months from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark.
Trademark registration in Nigeria
The mark will be registered for a period of 07 years from date of application, and the registration certificate is issued.
Trademark Renewal in Nigeria
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.