APPLICATION FOR REGISTRATION TRADE MARKS IN NIGERIA

The law governing Trade Marks registration in Nigeria is the Trade Marks Act and Trade Marks Regulation. The Act defines a Trade Mark as a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark. It includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. It is limited to the use of printed or other visual representation of marks. See Section 67 (1) and (2) and Ferodo Ltd v. Ibeto Ind. Ltd (2004) 5 NWLR (Pt. 866) 317

Certification trade mark on the other hand is defined as a mark registered or deemed to have been registered under Section 43 of the Act

REGISTRATION

A Trade Mark must be registered in respect of particular goods or classes of goods in the Register of Trade Marks at the Trade Marks Registry in the Federal Capital Territory, Abuja.

The Register is divided into Part A and Part B. The Registrar keeps records of all registered trademarks and related matters which includes: names and addresses of proprietors and registered users, notification of assignment and transmissions.

Registrars' Preliminary Advice – An applicant may request for the Registrars' preliminary advice on whether the mark is registrable under Part A or Part B. using Form 30. The advice is valid for only three months and not binding on Registrar.

CONDITIONS FOR REGISTRATION

For a mark to be registrable in Part A of the Register - it must contain at least one of the following essential particulars:

(a)   The name of the company, individual, firm 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 references 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.

It should be noted that for a trade mark to qualify for registration, there must be evidence of its distinctiveness.

For a trade mark to be registrable in Part B - it must be capable of distinguishing the goods in respect of which it is registered from the goods that have no connections with the Proprietors of the mark. A trade mark may be registered in Part B notwithstanding any registration in Part A.

PROCEDURE FOR APPLICATION FOR REGISTRATION

1.     Fill in a Search Form (entering the name of the mark and the class you want to search and the specimen of the mark). Pay search fees and form will be endorsed - then the search on the register conducted; if there is nothing similar, the mark may be available. Form 129.

2.     Then fill in and present the following  required documents:

(a)              Form 1 -    which is the Authorisation of Agent, - i.e.

owner of trademark appointing his agent in respect of the application.

(a)              Form 2 -     which is the application for registration of

Trade Mark. A space is provided on top of the form for pasting one Bromide of the Mark.

(b)             Form 3-     which is for additional representation of

Trade Mark to accompany application for Registration. It is, except for the heading, a blank sheet of paper - for pasting the Bromide - four forms required.

(c)              Filing fees.

(3)    An acknowledgment will be given to you (of your application)

(4)     The Registrar will examine the application for registrability  and also cause a search to be conducted for similarity of existing registered trade mark or similarity with any pending application.

The Registrar will also ensure that the mark is not deceptive or scandalous or is not in any way disallowed - The Registrar may then accept or refuse.

(5)     Refusal or conditional acceptance: should be in writing and within 2 months the applicant applies for a hearing or reply to objection in writing otherwise the application is considered withdrawn. If Registrar still refuses - applicant can appeal to the court (Federal High Court).

(6)     If accepted: A letter of acceptance will be issued. The trademark will now be deposited in the advertising Room for eventual publication in the Trade Mark Journal.

Rights Conferred by Registration

·        Registration confers on the registered owner the exclusive right to the use of the trade mark in relation to the goods mentioned in the register

·        Right assignable and transmissible

·        Registration of Assignment

·        Right to sue or institute an action for an infringement.

See: Dyktrade Ltd. v. Omnia Nig. Ltd (2000) 12 NWLR (Pt. 680) 1 at 9

Duration and Renewal

·        Duration for a period of 7 years

·        Renewal for a period of 14 years from the expiration of the last registration.

You can contact Akintunde Esan for further information and illumination on registration of trade marks in Nigeria.

APPLICATION FOR REGISTRATION TRADE MARKS IN NIGERIA is a legal illumination of AKINTUNDE ESAN known as The LEGAL ADVISER ONLINE. Akintunde Esan is the Managing Partner & Principal Consultant @ ASE OLODUMARE CHAMBERS (Legal Practitioners/Consultants & Chartered Mediators)