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)

LABELLING THE PRODUCT OF A COMPETITOR AS IMITATION IS TRADE LIBEL NOT A TRADEMARK INFRINGEMENT

The Respondent, a manufacturer and distributor of ballpoint pens, claimed that the Appellants published a false and offensive advertisement in national newspapers disparaging the Respondent’s product.

The Appellants had caused the publication of an advertisement depicting the Respondent’s pen which contained the words, “avoid imitation”.

The Respondent sued the Appellants at the High Court of Lagos State for libel, claiming damages in the sum of N10,000,000.00 (Ten Million Naira); and an order of perpetual injunction restraining the Appellants from further printing, issuing, publishing or circulating libelous materials about its products.

The Appellants filed a preliminary objection challenging the jurisdiction of the Lagos State High Court, contending that the Federal High Court has exclusive jurisdiction over the matter which involved the parties’ trademarks. The Appellants also contended that the suit constituted an abuse of court process.

The trial court struck out the objection and ruled that it has jurisdiction to entertain the suit. The Appellants appealed against this interlocutory decision to the Court of Appeal. The appeal was dismissed.

Further dissatisfied, the Appellants appealed to the Supreme Court.One of the issues raised for determination was:

“Whether on the totality of the materials before the Court of Appeal, the learned trial Judge was right in finding that the cause of action in the suit was founded in the tort of trade libel and not in trademark and therefore the High Court of Lagos State has jurisdiction to hear and determine the Respondent's suit.”

In support of this issue, learned counsel for the Appellants argued that the publication in question did not constitute the tort of trade libel. Rather, the issue revolves around the infringement of the Appellants' trademark and that falls squarely within the exclusive jurisdiction of the Federal High Court.

Learned counsel to the Respondent argued that in order to determine its jurisdiction, the trial court will consider the writ of summons and statement of claim. Counsel posited that the claim is based on the alleged false and malicious publication by the Appellants which impugned the Respondent's Charzin ballpoint pens, and that the trademark of the Respondent was not in issue in this case.

The Supreme Court noted that the Respondent’s claim is that the Appellants, by their publications in national newspapers, portrayed the Respondent's product as fake or imitation. The Court upheld the concurrent findings of the Court of Appeal and Lagos State High Court that the claim was based on a trade libel and does not involve trademark.

The Supreme Court unanimously dismissed the appeal, holding per Rhodes-Vivour, JSC that:

“My lords, section 230 (i) (f) of Decree No-107 of 1993 or section 251 (i) (f) of the 1999 Constitution confers jurisdiction on the Federal High Court to hear civil causes and matters relating to copy right, patent, designs, trademarks and passing of, industrial designs and merchandise marks etc. Section 272 (3) of the Constitution confers jurisdiction on the Federal High Court to hear questions as to whether the term of office of a member of the House of Assembly of a State, a Governor or Deputy Governor has ceased or become vacant. None of the above is applicable as the trademark "CHARZIN" was not in issue. What was in issue was the false publication to the reading public to avoid imitation. The publication refers to "CHARZIN" ball point pens as an imitation. The averments in the statement of claim do not complain about trade mark infringement of the mark "CHARZIN" rather it complains of the false and malicious publication warning the reading public to avoid "charzin" which is an imitation. That is the effect of "avoid imitation". This is clearly a cause of action that falls into the tort of libel and not copyright or trade mark as spelt out by the provisions of section 230 (1) (f) of Decree No. 107 of 1993 or Section 251(i) (f) of the Constitution. Since the claims are for libel and injunction, the State High Court and not the Federal High Court has jurisdiction to hear the plaintiff/respondents claims. Both courts below were correct.”

SOCIETE BIC S.A.  & ORS. v. CHARZIN INDUSTRIES LTD (2014) 4 CLRN

COPYRIGHT LAW : ILLUMINATIONS ON THE INFRINGEMENT OF COPYRIGHT IN NIGERIA

INTRODUCTION:

 

This edition of the Legal Illumination of Akintunde Esan (The Legal Adviser Online) is on copyright protection, copy infringement and remedies for copyright infringement in Nigeria.

Intellectual property law protects the creation of human mind and human intellect and it is divided into two branches, namely Industrial Property law and Copyright law. Industrial property law protects the inventions while Copyright law protects literary and artistic works as well as creations in the field of neighbouring rights. See: Ifeanyi  Okoyo & Anor v. Prompt & Quality Services & Anor. (2003 – 2007) 5 I.P.L.R  117 at 130,paras.d-f ,per Kasim .J (F.H.C)

 

COPYRIGHT:

 

Copyright law and practice in Nigeria is governed by the Copyright Acts of 1970 & 1988, there have also been amendments introduced to the Act in 1992 & 1999.

There are also several treaties and international agreements on Copyright to which Nigeria is a party or signatory such as:

• THE BERNE CONVENTION 1886;
• THE UNIVERSAL COPYRIGHT CONVENTION 1952;
• ROME CONVENTION;
• TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS [TRIPS]; and
• THE WORLD INTELLECTUAL PROPERTY ORGANISATION [WIPO].

INFRINGEMENT OF COPYRIGHT 

 

Under Section 15(1) of the Copyright Act, copyright is infringed by any person who without the license or authorization of the owner of the copyright: 

 

1. Does or causes any other person to do an act, the doing of which is controlled by copyright;

 

2. Imports or causes to be imported into Nigeria any copy of a work which if it had been made in Nigeria would be an infringing copy. 

 

3. Exhibits in public any article in respect of which copyright is infringed.

 

4. Distributes by way of trade, offers for sales, hire or otherwise for any purpose prejudicial to the owner of the copyright, any article in respect of which copyright is infringed. 

 

5. Makes or has in his possession, master tapes, machines, equipment or contrivances used for the purpose of making infringed copies of the works; 

 

6. Permits a place of public entertainment or business to be used for a performance in the public of the work, where the performance constitutes an infringement of the copyright in the work, unless the person permitting the place to be used was not aware, and had no reasonable ground for suspecting that the performance would be an infringement of the copyright; 

 

7. Performs or cause to be performed for the purpose of trade or business or as supporting facility to trade or business, any work in which copyright subsists. 

 

ACTION FOR INFRINGEMENT 

 

Under section 16 of the Copyright Act, an infringement of copyright suit can only be filed in the Federal High Court in the jurisdiction where the infringement occurred by:

 

- The owner;

- An assignee; or

- An exclusive licensee of the copyright

 

Where the owner and an exclusive licensee have concurrent rights of action, none of them may, without leave of court, proceed with the action unless the other is joined as plaintiff or added as defendant.

 

NATURE OF RELIEF CLAIMABLE

 

In an action for infringement, all such relief by way of damages, injunction, accounts of profits or otherwise is available to the plaintiff as is available in any corresponding proceedings in respect of infringement of other proprietary rights. See: section 16 (1).

 

1. Damages:

 

Exemplary, infringement and flagrant Damages

 

Where in an action, infringement of copyright is proved or admitted, the court may award additional damages if it satisfied that effective relief would not otherwise be available to the plaintiff, having regard (apart from all other factors) to:

 

(a) The flagrancy of the infringement, and

 

(b) Any benefit shown to have accrued to the defendant by reason of the infringement - s. 16 (4). In Plateau Publishing Co. Ltd. v.Chief Chuks Adophy [1986] 4 NWLR (Part 34) 205, the court refused to apply a similar provision in the repealed Copyright Act, 1970.

 

2. Conversion Rights: 

 

All infringing copies of a copyright work or part of it and all plates, master tapes, machines, equipment or contrivance used, or intended to be used for the production of such infringing copies are deemed to be the property of the owner, assignee or exclusive licensee, as the case may be, of the copyright who accordingly may take proceedings for the recovery of possession of those articles or in respect of conversion of them. See: Section 18.

 

In Haritz Ibezim Okilo v. Dick Francis & Anor. (2003- 2007) 5 I.P.L.R 230 at 244 -245, per Ukeje .J (FHC LAGOS) held that: 

 

“2. The Plaintiff seeks an Order restraining the 1^st Defendant from using the Plaintiff’s Original DAT TAPE of the music work.In that regard, by Section 18 of the Copyright Act,(Cap C 28), which relates to conversion right, it is provided that an exclusive licensee of a Copyright may institute an action for the recovery of the possession of his Master Tape or an action to restrain the conversion of the Master Tape of the musical work, in this case, “Happiness De Answer

The Plaintiff has instituted this Action for recovery of his Master or DAT (master) Tape of “Happiness De Answer”. Again, by virtue of evidence of the parties before the Court, the 1^st   Defendant’s admission of receiving the DAT Tape, the 1^st Defendant’s failure to return the tape from 1992-2006, and also by the provisions of Section 18 of the Copyright Act relating to conversion right, the Plaintiff has proved his entitlement to an Order to compel the 1^st Defendant to return the DAT Tape of the Plaintiff’s musical work, “Happiness De Answer” 

Accordingly, the Plaintiff’s second claim also succeeds and the 1^st Defendant is hereby restrained forthwith to stop the infringement of the musical work, “Happiness De Answer””

 

Thus, the owner of a copyright has three causes of action:

 

a. Action for infringement of the copyright;

 

b. Action for conversion of the offending articles; and

 

c. Recovery of the offending articles

 

3. Breach of Statutory Duty:

 

An infringement of rights conferred by sections 10 and 12 of the Copyright Act is actionable as a breach of statutory duty owned to the person entitled to the rights See: section. 19 (1) and Haritz Ibezim Okilo v. Dick Francis & Anor (2003- 2007) 5 I.P.L.R  230 ,per Ukeje .J (FHC LAGOS)

 

“Section 19(1) and (2) of the Copyright Act, create the strict liability, statutory offence where an infringement of Copyright is proved. Subsection (2) confers in the Copyright owner, an entitlement to award of damages, injunction and such other remedies as this Court may deem fit to make in the circumstance. In that case, there is no need to specially or specifically prove damages.”

 

4. Criminal Sanctions:

 

Simultaneity of Civil and Criminal Actions Civil and criminal actions may be taken simultaneously in respect of the same infringement. See: Section 24.

 

5. Inspection and Seizure: 

 

In any action for infringement of any right, where any exparte application is made to the court, supported by affidavit, that there is reasonable cause for suspecting that there is in any house, or premises any infringing copy or any plates, film or contrivance used or intended to be used for making infringing copies or capable of being used for the purpose of making copies of any infringing article, book or document, the Federal High Court may issue an order authorizing the applicant to enter the house or premises at any reasonable time by day or night accompanied by a police officer not below the rank of an Assistant Superintendent of Police, and:

 

a. Seize, detain and preserve any such infringing copy or contrivance,

 

b. Inspect all or any relevant documents in the custody or under the control of the defendant.

 

DEFENCES TO INFRINGEMENT OF COPYRIGHT

 

The right of a copyright owner in respect of literary, musical, artistic works and cinematography films does not include the right to control:

 

(a) Fair Dealing: The doing of the act by way of fair dealing for purposes of research, private use, criticism or review or the reporting of current events, subject to the condition that, if the use is public, it must be accompanied by an acknowledgement of the title of work and its authorship except where the work is incidentally included in a broadcast.

 

(b) The doing of any of the aforesaid acts by way of parody, pastiche, or caricature.

 

(c) The inclusion in a film or a broadcast of an artistic work situated in a place where it can be viewed by the public.

 

(d) The reproduction and distribution of copies of any artistic work permanently situated

 

(e) The incidental inclusion of an artistic work in a film or broadcast, etc.

 

(f) Any use made of a work in an approved educational institution.

 

It is important to note that:

 

It is important to note that the exceptions in paragraphs (a), (h), (k) (I) and (p) of Schedule 2 to the Copyright Act apply to copyright in sound recording in like manner as they apply to copyright in literary, musical or artistic work or a cinematography film .See Section. 6 (2).While the exceptions in paragraphs (a), (h), (k), and (0) of Schedule 2 apply to copyright in broadcasts. See: Section 7 (3).

 

DEFENSE OF INNOCENT INFRINGEMENT –

 

Where in an action for infringement of copyright it is proved or admitted that an infringement was committed but that at the time of the infringement the defendant was not aware and had no reasonable grounds for suspecting that copyright subsisted in the work, the plaintiff will not be entitled to any damages, but to an account of the profits made through the infringement - (section I 6( 3). 

 

In Plateau Publishing Co. Ltd. v.Chief Chuks Adophy [1986] 4 NWLR (Part 34) 205 it was held that this defense is available on to the author of the infringing article and not the publisher of the article. 

 

RECIPROCAL EXTENSION OF PROTECTION 

 

Copyright law generally operates within the borders of the country making it and benefits only works made by its citizens or aliens domiciled therein. To remedy this situation, provision is made for reciprocal extension of protection to persons in other countries. 

 

Where any country is a party to a treaty or other international agreement to which Nigeria is also a party, and the Minister responsible for culture is satisfied that the country provides for protection of copyright in works which are protected under the Act, the Minister may by order in the Gazette extend the application of the Act in respect of any or all of the works referred to in section. (1) of the Act: 

 

(a)     To individuals who are citizens of or domiciled in that country; 

 

(b)     To bodies corporate established by or under the law of that country; 

 

(c)     To work, other than sound recording and broadcasts first published in   that country; and 

 

(d)     To broadcasts and sound recording made in that country 

 

In Microsoft Corporation v. Franike Associates Ltd (2012) 5 CLRN 145 at 157,lines 25 – 31,158 lines 36 -41, it was  held that for a court to hear a claim on foreign regulated copyright, such claim must be accompanied by a certificate from the Nigerian Copyright Commission or publication in the Gazette showing extension of copyright protection.

 

You are advised to contact Akintunde Esan (The Legal Adviser Online), a Legal Consultant on intellectual property for further legal illumination or legal advice on copyright protection, copyright infringement and remedies available to redress the infringement of  your copyright or intellectual property in Nigeria.