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Trademark Regulation Under The Trademarks Act Of Nigeria

Trademark Regulation Under The Trademarks Act Of Nigeria

Intellectual Property :- Part A Trademark Registration Under The Trademarks Act Of Nigeria

This article is the first in a 7-part article series and is mainly focused on the provisions of Nigerian law, specifically the Trademarks Act, on the topics of :-

– The Trademark register & Registrar.

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– Effects of non-registration.

– Registration in respect of particular goods.

– Rights given by Part A registration.

What exactly is the trademark register and who is the trademark registrar?

The Registrar

– The registrar is an appointed person in charge of the Trademarks registry and shall have an official seal.

– The registrar is answerable to the Federal Minister Of Trade & Investment.

– The functions of the registrar can be reassigned by the minister to any other officer he might deem fit for the purpose.

The Register

– There shall continue to be kept a record called a register of trademarks, in which shall be entered all registered trademarks with the names and addresses of their proprietors, the date on which applications were made for their registration, notifications of assignments & transmissions, the names and addresses of all registered users & such other matters relating to registered trademarks as may be prescribed.

What is the effect of non-registration of a trademark?

– No person shall be entitled to institute any proceeding to prevent or to recover damages for , the infringement of an unregistered

trademark, but no statutory provision shall be taken to affect any right of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.

What is the provision of law regarding registration in respect of particular goods?

– A trademark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the registrar, whose decision shall be final.

What is the right given by registration of trademarks in Part A?

– The registration of a person in Part A of the register as the proprietor of a trademark other than a certification trademark in respect of any goods shall, if valid, give or be deemed to have given to that person the executive right to the use of that trademark in relation to those goods.

Intellectual Property:- Vested Rights & Part B Trademark Registration Under Nigerian Law

This article will be dealing with the provisions of the Trademark Act concerning the topics of :-

– Rights given by the registration of trademarks in Part B.

– Saving for vested rights.

– Saving for use of name, address or description of goods.

What is the right given by registration in Part B?

– The registration of a person in Part B of the register as proprietor of a trademark in respect of any goods shall, if valid, give or be deemed to have given to that person the right in relation to those goods as if the registration had been in Part A of the register.

What is the provision of the Trademark Act regarding saving for vested rights?

– Nothing in this act shall entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to which that person or predecessor in title of his has continuously used that trademark from a date previous to – 

a). The use of the first mentioned trademark in relation to those goods by the proprietor or predecessor in title of his trademark.

b). The registration of the first mentioned trademark in respect of those goods in the name of the proprietor or a predecessor in title of his, whichever first occurred, or where such use is proved to object to that person being put on the register for that identical or nearly resembling trademark in respect of those goods under the Act.

What is the provision of the Trademark Act concerning saving for use of names, addresses or description of goods?

– The registration of a trademark shall not interfere with :- 

a). Any bonafide use by a person of his name or the name of his place of business, or the name of his place of business, or of the name, or the name of the place of business, of any of his predecessors in business.

b). The use by any person of any bonafide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as mentioned  under this Trademark Act. 

Intellectual Property :- Registrability & Validity Of Registration Of Trademarks Under Nigerian Law

This article will be focused on trademarks under Nigerian law concerning the topics of distinctiveness as a need for registration in Part A of the Trademark register.

Distinctiveness Needed For Registration In Part A

– In order for a trademark to be registrable in Part A of the register it must contain or consist of at least one of the following essential particulars:-

a). The name of a company, firm, individual represented in a special or particular manner.

b). The signature of the applicant for registration or some predecessor in his business.

c). An invented word or invented words.

d). A word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname.

e). Any other distinctive mark :- Provided that a name, signature or word/words other than such as fall within paragraphs (a) to (d) of this provisions, shall not be registrable, except upon evidence of its distinctiveness.

– For the purpose of this provision, distinctiveness adapted in relation to the goods in respect of which a trademark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trademark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally, or where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

– In determining whether a trademark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which –

a). The trademark is inherently adapted to distinguish as aforesaid.

b). By reason of the use of the trademark or any other circumstances, the trademark is in fact adapted to distinguish as aforesaid.

What is the validity period of a trademark registration made under Part A of the Trademark register?

– Part A registration of a trademark is valid for 7(Seven) years.

This part will be taking a closer look at provisions of the Trademark Act on registration and validity of trademarks, particularly the topics of :-

– The capability of distinguishing needed for registration in Part B.

– The registration of deceptive or scandalous matter.

– Trademarking of Chemical substance names.

Capability of Distinguishing Needed For Registration in Part B

– In order for a trademark to be registrable in Part B of the register, it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trademark is or may be connected in the course of trade from goods in the case of which such connection subsists, either generally or where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

– In determining whether a trademark is capable of distinguishing as aforesaid, the tribunal may have regard to the which – 

a). The trademark is inherently capable of distinguishing as aforesaid.

b). By reason of the use of the trademark or of any other circumstances, the trademark is infact capable of distinguishing as aforesaid.

– A trademark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trademark or any part or parts thereof.

Deceptive or Scandalous Matter Not Registrable

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.

b). Any scandalous design.

Names of Chemical Substances

– 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 trademark.

Identical & Resembling Trademarks

– These are not be registered.

Intellectual Property :- Assignment & Transmission Of Trademarks In Nigeria

This article talks about the assignment and transmission of trademarks as provided for under the Trademarks Act of Nigeria, particularly in the areas of :-

– Assignability of trademarks

– The power of the registrar to require, or dissolve associations of trademarks.

– The power of a registered proprietor’s power to assign trademarks.

What are the provisions of the trademark act on assignability of trademarks?

– This is allowed under the act, notwithstanding any rule of law, and can be done in connection with the goodwill of a business.

– This provision will apply to an unregistered trademark used in relation to any goods as they apply in regard to a registered trademark registered in respect of any goods, if :

a). at the time of the transmission of the unregistered trademark it is used in the same business as a registered trademark;

b). it is assigned or transmitted at the same time and to the same person as that registered trademark;

c). it is so assigned or transmitted in respect of goods, all of which are goods –

(i). In relation to which the registered trademark is used in that business.

(ii). In respect of which the registered trademark is assigned or transmitted.

– No rights will follow an assignment made without goodwill until the assignee within 6 months applies to the registrar for directions as to the advertisement of the assignment.

What is the extent of the power of the registrar to require or dissolve association of trademarks?

– Associated as directed by the registrar where are a trademark that is registered is identical with another trademark registered or the subject of an application to register where owned by the same proprietor.

– This association can be dissolved if the registrar is satisfied that there’s no likelihood of deception or confusion.

– Decisions of the registrar are subject to appeals via courtroom suits.

What is the effect of association of trademarks?

– Associated trademarks are assignable and transmissible only as a whole & not separately, but shall for all other purposes be deemed to have been registered as separate trademarks.

What is the extent of a registered proprietor’s power to assign his trademark?

– This power is guaranteed under the trademarks act and is required to be acknowledged by receipts issued by the proprietor.

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.

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 :- Assignment & Transmission Of Trademarks In Nigeria

This article talks about the assignment and transmission of trademarks as provided for under the Trademarks Act of Nigeria, particularly in the areas of :-

– Assignability of trademarks

– The power of the registrar to require,or dissolve associations of trademarks.

– The power of a registered proprietor’s power to assign trademarks.

What are the provisions of the trademark act on assignability of trademarks?

– This is allowed under the act, notwithstanding any rule of law, and can be done in connection with the goodwill of a business.

– This provision will apply to an unregistered trademark used in relation to any goods as they apply in regard to a registered trademark registered in respect of any goods, if :

a). at the time of the transmission of the unregistered trademark it is used in the same business as a registered trademark;

b). it is assigned or transmitted at the same time and to the same person as that registered trademark;

c). it is so assigned or transmitted in respect of goods, all of which are goods –

(i). In relation to which the registered trademark is used in that business.

(ii). In respect of which the registered trademark is assigned or transmitted.

– No rights will follow an assignment made without goodwill until the assignee within 6 months applies to the registrar for directions as to the advertisement of the assignment.

What is the extent of the power of the registrar to require or dissolve association of trademarks?

– Associated as directed by the registrar where are a trademark that is registered is identical with another trademark registered or the subject of an application to register where owned by the same proprietor .

– This association can be dissolved if the registrar is satisfied that there’s no likelihood of deception or confusion.

– Decisions of the registrar are subject to appeals via courtroom suits.

What is the effect of association of trademarks?

– Associated trademarks are assignable and transmissible only as a whole & not separately, but shall for all other purposes be deemed to have been registered as separate trademarks.

What is the extent of a registered proprietor’s power to assign his trademark?

– This power is guaranteed under the trademarks act and is required to be acknowledged by receipts issued by the proprietor.

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