SERVICE MARK REGISTRATION IN NIGERIA
FIGURATIVE TRADEMARK REGISTRATION
Registering service mark and figurative trademark in Nigeria underscores the protection of the registered mark against anyone who would intend to register an identical or similar mark or use the mark without the consent of the owner; it also connotes the protection, as it is a pre-requisite for the institution of infringement action under the Trade Mark Act where it has been illegally infringed upon.
Section 3 of the Trademark Act 1967 states that “no person shall be entitled to institute any proceedings to prevent or recover damages for an infringement of an unregistered trademark”. Going by this provision of the law cited, it can be inferred that for a proprietor to exercise a right over a trademark, it must be registered in respect of particular goods or services as provided under Section 4 of the Act.
A trademark, when registered in respect of particular goods or service, gives or is deemed to be given the exclusive right to use of the mark in respect to that goods, as provided under section 5 of the Act. And the right shall be deemed infringed by anyone not being the proprietor using it without the permission of the owner or uses a mark so resembling as is likely to deceive or cause confusion in the minds of the public.
There are several stages involved in registering a trademark, with each stage having its timeline.
- The first step is to authorize an agent or lawyer for the registration by issuing a Power Of Attorney authorizing such an agent.
- The first step is to conduct a search at the Trademark Registry in the appropriate class to check if the proposed mark sought to be registered is identical to an existing mark. This process can be concluded within two working days.
- The next step is to file an application if the search is successful i.e. if there is no closely similar or conflicting mark registered in the same class.
- Between 2- 3 weeks from the date of application, the application will move to the examination stage where it will be reviewed and the Registrar will give Notice of Acceptance to the applicant where the Registrar finds the trademark registrable. At this point, the trademark is deemed to have been duly registered.
- Where the Proposed Trademark registered infringes on another existing mark or does not have a distinctive feature, the Registry will issue a Notice of Refusal instead or Acceptance Notice.
- A trademark application is usually published in the Nigerian Trademark Journal for a period between 3-12 months depending on the backlog at the registry. When the mark is published, it is open for any opposition likely to be raised by the general public. The publication is for any proprietor of an existing trademark to raise an opposition within 2 months where the registered mark is identical to its own.
- The final stage, which is the issuance of the Certificate is dependent on when the trademark is published in the Journal and opposition is raised. Where no opposition is raised within the specific period, the registrar will issue the Applicant with a Certificate of Registration within a period of 3 months after publication.
- The Certificate of Registration grants the owner exclusive right of use of the trademark and it has the initial validity of seven (7) years and subsequent renewal for 14 years. There is no limitation as to the number of renewals that can be done on a mark. The renewal should be done 3 months before the expiration of the existing trademark.
For a trademark to be registered, it must be distinctive and affixed to a product, registered in a particular class at the Trademark Registry for an initial period of 7 years from the date of application for submission, and subsequently and constantly be renewed.
By the Trademark & Intellectual Property Law Department at Resolution Law Firm Nigeria