Intellectual Property :- Trademark Use & Non-Use Under Nigerian Law

This write-up will be looking at trademark use & non-use as well as trademark removal/de-registration as well as defensive registrations and registered users under Nigerian law, specifically the Trademarks Act of Nigeria.

What qualifies as non-use of a trademark which would lead to removal of a trademark from the trademark registry ?

– Removal of a trademark is possible by either :-

a). An order of court.

b). At the option of an applicant.

c). A decision of the registrar of trademarks. 

– The grounds of non-use would include the following :-

a). Lack of any bonafide intention on the part of the applicant to use the trademark in relation to those goods up to the date one month before the application.

b). No bonafide use for 5 years from registration.

– The tribunal may refuse an application under this provision if it can be proved that there’s bonafide use of the subject trademark.

What are the provisions of the trademark act on the defensive registration of well-known invested words?

– Where a trademark consisting of an invented word or invented words has, as respects to any goods in respect of which it is registered and in relation to which it had been used (otherwise called “familiar goods”), become so well known that its use in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trademark in relation to the familiar goods, the trademark may, on the application in the prescribed manner of the proprietor registered in respect of the familiar goods, be registered in his name in respect of those other goods as a defensive trademark, notwithstanding that the proprietor registered in respect of the familiar goods, does not use or propose to use the trademark in relation to those other goods and notwithstanding anything in the act and while so registered, the trademark shall not liable to be taken off the register in respect of these goods under the relevant section of this act.

What is the provision of the Trademark Act on registered users?

– A person other than the proprietor of a trademark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trademark) & either with or without conditions or restrictions.

Intellectual Property :- Offences As To Trademarks & Trade Descriptions Under Nigerian Law

This article and final part of this intellectual property article series looks at the criminal law aspect of trademarks, specifically  trademark infringements & fraudulent trade descriptions under Nigerian Law, specifically the Merchandise Marks Act of Nigeria.

Our focus will be mainly on the topics of :-

– What false trade descriptions are under the merchandise marks act.

– Offences as to trademarks & trade descriptions.

– Forging trademarks.

– Mark or trade description  applications.

What exactly is a false trade description under the merchandise marks act?

– A trade description which is false or misleading in a material respect as regards the goods to which it is applied, and includes every alteration of a trade description, whether by way of addition, effacement,or otherwise where that alteration makes the description false or misleading in a material respect, and the fact that a trade description is a trademark,or part of a trademark, shall not prevent such trade description being false within the meaning of the merchandise marks act.

What are the offences highlighted by the merchandise marks act as  relating to trademarks & trade descriptions?

– Forging a trademark.

– Falsely applying to goods, any trademark or marks so nearly resembling a trademark as to be calculated to deceive.

– Making, disposing of, or having in possession, any die, block, machine or other instrument for the purpose of forging, or of being used for forging, a trademark.

– Applying any false trade description to goods.

What are the exceptions to the provisions of the merchandise marks act regarding acts or omissions constituting offences?

– An act or omission ordinarily being a violation of the merchandise marks act would not be deemed an offence where:-

a). The accused party acted innocently.

b). The accused had no reason to suspect the genuineness of the trademark, mark or trade description.

c). The accused is simply an employee of the legitimate proprietor and is in possession of materials such as dies, blocks, machines by reason of his employment despite the materials legitimately belonging to the proprietor.

What are the penalties for these offences?

– The violation of the merchandise marks act constituting an offence is punishable with an imprisonment term or 2 years, a fine, or both.

What qualifies as forging a trademark under the merchandise marks act?

This occurs via :

– Making a mark without the assent of the proprietor with the intention to deceive.

– Falsifying any genuine trademark, by alteration, addition, effacement or otherwise.

It should be noted that the defendant/accused has the burden of proving the proprietor’s assent.

What are the provisions of the merchandise marks act regarding the application of marks or descriptions?

This occurs when :

– Applying marks or descriptions to the goods.

– Applying any covering, label, reel,or other thing in or with which the goods are  sold or exposed  or had in possession for any purpose od sale, trade or manufacture.