Trademark is a mark used or proposed to be used in relation to goods for the purposes of indicating a connection in the course of the trade between the goods and some persons having the right either as a proprietor or as registered user to use the mark. Trademark may include a devise, brand, heading, label, ticket, name, signature, word, letter numeral or a combination of marks.
PROCEDURE FOR REGISTRATION OF TRADEMARK
- SEARCH– Search is first conducted at the relevant agency to see if there is any resemblance or other features which may make the mark not registrable as provided by the Trademarks Act Cap T13 LFN2004.
- ACKNOWLEDGMENT AND ACCEPTANCE: where the result of the search is favourable, the applicant now formally applies to the trademark’s commission upon making the necessary payments to register the ‘’MARK’ and ACKNOWLEDGMENT and ACCEPTANCE of the application is then issued to the applicant. At this stage, the applicant cannot lay claim or enforce so to speak his/her ownership over the said trademark (he could however proceed in PASSING OFF if he she thinks that waiting for certificate to be out before out before enforcing his rights may cause him a lot of damages}.
- PUBLICATION/GAZETTING: After the Acknowledgment and the Acceptance letter is issued to the applicant, he/she pays for the publication which is where the long wait comes in as the commission makes at most four publication/gazetting in a year. The essence of the publication/gazetting is to give other stake holders or members of the public the opportunity to object to the issuance of certificate or registration of the trademark to the applicant. Where there is no opposition, the applicant proceeds to process the certificate. The fact that there is an opposition to the registration of a trademark does not on its own mean that the trademark will not be registered. What it simply means is that the applicant will be invited to show reason why the mark should be registered in his/her favour. It is only when and where the issue of the opposition is resolved, that the application can now proceed to the certificate level. It is important to point out that apart from opposition from other interested parties, the registrar of trademark can on its own reject an application for registration if in his/her opinion, the mark is scandalous, deceptive and capable of causing confusion or contrary to law or morality. Neither will the Registrar register a Trade Mark which is identical or nearly resembles an existing registered Trade Mark belonging to another proprietor.
- REGISTRATION/CERTIFICATE: It is only when all the above mentioned stages has been successfully navigated that the MARK will be registered and certificate issued to the applicant.
- ADVANTAGES OF REGISTRATION OF TRADEMARK AND OBTAINING CERTIFICATE:
- The proprietor shall upon registration be entitled to exclusively control over the use of the Trade Mark in relation to the goods and services under which it is registered
- Gives the owner a unique identity different from other players in the industry/market. In effect, the owner can leverage on that uniqueness of the mark to maximise profit.
- It is an easier and faster means of stopping fake products or imitator. With the certificate, an application can easily be made to the court for an order to arrest an infringing mark/product unlike the PASSING OFF process which the court may be reluctant in granting that early order as the owner must show a long exclusive usage of the mark.
- THE FILING REQUIREMENTS FOR TM REGISTRATION IN NIGERIA ARE AS FOLLOWS:
- An application form containing the full names, street address and description of the applicant.
- List of good and services
- A simple signed power of Attorney(Where necessary )
- 15 prints of the mark.
- VALIDITY OF REGISTRATION: In order for a Trade Mark to be registrable, it must contain at least one of the following:
- The name of the company, individual of firm represented in a particular manner.
- The signature of the applicant or his predecessor in his business;
- An invented word or invented words;
- A word having no direct reference to the character or quality of the goods and not by its ordinary signification, a geographical name or a surname; and
- Any other distinctive mark: A mark is said to be distinctive when it is used in relation to a good or service to distinguish the said good or service from that of the Trade Mark’s proprietor in the course of trade from other goods or services.
- DURATION OF TM: Trade Mark shall subsist for a period of seven years from the date of first registration and can be renewed from time to time in accordance with the provision of the law.
- ASSIGNMENT OF TRADE MARK AND PERMITTED USE: A Trade Mark ( whether registered or not) is assignable and transmissible with respect to either all or some of those goods in respect of which it is registered, or in connection with the goodwill of a business. However, with respect of a registered Trade Mark, record of such Trade Mark and assignment made in respect of it shall be registered in the Register of Trade Mark and shall be made available for the inspection of the public. In the same vein, a person other than the Proprietor of a Trade Mark may be registered as a registered user of the Trade Mark in relation to all or any other goods in respect of which it is registered.
The law also allows for defensive registration of a well-known or invented mark in respect of familiar goods. This simply means that marks, which have become so well-known that there use in relation to a particular goods for which they are not registered, would likely to be taken as Trade Mark for those familiar goods for which they are not registered, the person entitled to the Trade Mark may make an application in respect of such familiar goods to be registered as Defensive Trade Mark. Lastly, applications for Trade Mark registration from Trade Mark owners, who have their Trade Marks registered in countries which are parties to a Convention to which Nigeria is a party, may be registered in priority to other applications