In Nigeria, the registration of trademarks is handled by the registry of Trademark, Patent and Design under the commercial division of the Federal Ministry of Industry, Trade and Investment located in Abuja Nigeria.
Trademark is a recognizable name or design that is legally registered and used to identify and represent a product, services or company. A natural (individual) or artificial person (Company) can register a trademark, which consists of an invented name, logo, mark, slogan, and domain name in Nigeria. The registration of a trademark in Nigeria is valid for a period of 7 years subject to renewal every 14 years thereafter.
The law that governs trademark in Nigeria is the Trademark Act 1967. When a trademark is registered, it protects the owner by conferring the exclusive right to use it to identify goods and services from other existing, similar or confusing marks.
Assignment of Trademark
When a trademark has been duly registered in accordance with the normal process of registration, the owner has the exclusive rights over it, and like any other property one can assign or transfer the ownership of the trademark to another person or entity. The assignment of a trademark can be in respect of the business in total or the particular goods and services covered by that trademark. The Assignor is one who assigns the ownership of trademark to another person or company, while the Assignee is the person who the trademark is assigned to.
A trademark is assigned to the goodwill of the business or not. Where it is assigned with the goodwill, the assignee is to use the trademark in relation to the goods that the assignor previously used them for.
Procedure for Assignment
Section 26 of the Trademarks Act provided for the assignment of a trademark. It states that a registered trademark can be assigned in respect of all goods in which it was registered or some of those goods.
Section 4 of the Act states that the Assignee of a trademark shall not acquire any rights under the assignment until the following requirements have been satisfied:
- Within 6 months from the day of the assignment, the assignee must apply to the registrar for the advertisement of the assignment.
- The assignment must be advertised in the form and manner directed by the Registrar.
- Where the registrar gives direction for advisement, he shall cause a notice of assignment to be published in the trademark journal. The application fee for direction is from N5, 000.00 (Five Thousand Naira).
- The person or entity entered in the register of the trademark as the proprietor of the trademark must give receipts for any consideration of the assignment.
- Where the assignee has become entitled to the trademark by assignment, it shall make an application to the Registrar to register its title on Form 16 and the Registrar on satisfaction on proof of its title shall register him as the proprietor of the trademark in respect of the goods or services which the trademark has an effect. Application fee for registration of Assignment is N15, 000.00 (Fifteen Thousand Naira), which exclude the professional fee of trademark agent or lawyer handling it.
- All particulars of the assignment shall be recorded into the register of trademarks. The assignee or assignor is to file an application for recording his name as the registered proprietor of the mark transferred.
- Note that the decision of the Registrar in respect of this can be appealed to the court.
Unregistered trademarks can also be assigned along with a registered trademark by the proprietor to another person or company provided that the unregistered trademark is used in the same business as a registered trademark; also it is assigned in respect of the same goods for which the registered trademark is being assigned. However, it is greatly advisable that an Assignor should register its entire trademark before assigning it to another.
When does Recording of Trademark Arise?
The assignor or the assignee or an authorised agent of either the assignor or assignee does recording of a trademark. Where an assignment of a trademark is connected with the goodwill associated with the trademark, it should be recorded, for the purpose of the assignee bringing an action for infringement against third parties where necessary.
Documents Required for Assignment or Recording the trademark includes the following:
- The assignee will submit the name, trade and business address and description of the assignee to the Registrar.
- The full particulars of the assignment under which he claims to be entitled to the trademark. The particulars are usually contained in a Deed of Assignment and the deed must be written in the English Language, in the case of foreigners an English translation version of the deed should be provided.
- A copy of the Deed of Assignment will be retained by the Registrar but is not open to public inspection.
- A duly signed power of attorney authorizing an agent or the assignee to record the assigned trademark.
In the Nigerian Jurisdiction, the Trademarks Act 1967 is the relevant Law that governs trademark applications. A mark, logo, device, label or a combination of all these that are distinctive in relation to goods and services can be registered as a trademark.
The proprietor of a mark can assign ownership of the mark to another person or company. The assignment of a trademark can be in respect to the particular goods which the assignee is expected to carry on its goodwill, or it can be transferred to be used for any other goods or services.
The above procedure as provided by the Act must be complied with and it is advisable for the Assignee by virtue of the assignment to record its title in the register to prevent infringement of the title by a third party and for the purpose of validity.
Written by Trademark & Intellectual Property Law at Resolution Law Firm, Nigeria