HOW TO REGISTER A TRADEMARK IN NIGERIA
The trademark registration in Nigeria provided for by Trade Marks Act LFN 1990 is one important way to protect and distinguish someone’s trade symbols in Nigeria. Registering a trademark in Nigeria is the only way to protect a unique brand for goods or services in the market place.
A Trademark is a recognizable name or design, which is legally registered and used to identify and distinguish a product or services from others.
Some of the trademarks that can be registered include name, slogan, shape. The trademark is usually registered through the Trademarks, Patents and Designs Registry, Commercial Law Department of the Federal Ministry of Industry, Trade and Investment in Nigeria.
Trademark registration in Nigeria gives the owner the right to use such registration to exclude others from violating or willfully copying or usage by a third party without consent. A registered owner of a trademark may institute an action in court to block any infringements or unauthorized use of their trademarks. The owner of a registered trademark also has the right to oppose any future trademark registration that may infringe on its own trademark.
HOW TO REGISTER A TRADEMARK
Essentially, there are three major stages involved in trademark registration, which I will briefly explain as follows:
1) SEARCH & APPLICATION
The first step required to be taken for any person or organization desiring to register a trademark is to brief an Agent, usually a lawyer with the trademark or the description of a symbol or logo or design to be registered.
A search is conducted on the trademark, and if it is not in conflict or too similar with any existing trademark, an application for the registration can proceed.
The Registrar will issue an acknowledgement upon the recipient of any due application. At this stage, the applicant can have confidence, but not an assurance, in the success of the entire registration process.
It is worthy of note to state that different payments are to be made at this stage for search and application processing.
Whereupon an application has been approved after a successful search has been conducted, the Registry will accept, register the trademark and issue an Acceptance Letter to the applicant. The Acceptance Letter is initial evidence that the trademark has been duly registered.
3) PUBLICATION AND CERTIFICATION
The third stage involves publication in the trademark journal and certification. This is the final stage.
Upon the acceptance of the registration of a trademark, the Registrar will ensure the notice of the application is published in the Trademark Journal. Such notification will include the full details of the application and the applicant.
By virtue of this publication, any interested person would have the opportunity to oppose or object to the registration. Any person or organization who considers that a trademark being sought may likely confuse or mislead the public in light of any pre-existing trademarks may protest to the Registrar to stop such registration by filing a notice of opposition in a prescribed form.
Protests or oppositions containing the grounds upon which the protest is made must be sent to the Registrar of Trademarks within two months of publication of notice in a journal.
The Registrar will notify the applicant of any protest or opposition received. The applicant may respond to such opposition within one month from the date of receipt of such notice from the Registrar. An applicant who failed to respond to the opposition received with his or her own counter-statement may be deemed to have abandoned his or her application.
Where Registrar received the response of the applicant stating why the applicant is entitled to such trademark, the Registrar of Trademark shall constitute a Tribunal to determine the conflict in favour of one of the contending parties.
Where there is no opposition to the publication in the journal, or opposition has been made and successfully resolved in favour of the applicant, the Certificate of Registration will be issued for the trademark sought.
The Certificate indicates the evidence of due registration and completion of all processes. It confers a right on the proprietor or the owner to use the trademark to the exclusion of every other entity.
However, where any other person or entity successfully challenged the applicant in opposing a trademark registration, the Registrar will issue a letter of refusal to the applicant.
BASIC REQUIREMENTS FOR TRADEMARK REGISTRATION IN NIGERIA
The basic requirements every intending trademark applicant should prepare or provide include the followings:
- Logo, which may include Words and/or Device
- Name of the applicant
- Contact details of the applicant
- Power of Attorney appointing an agent to conduct such registration (an accredited agent/lawyer may help to prepare the power of attorney)
COST OF TRADEMARK REGISTRATION
Most people often want to know how much it cost to register a trademark in Nigeria. The price of trademark registration in Nigeria includes the filing fees and the professional fee of the lawyer or agent handling such application. The price may be differed most times, taking into consideration that the professional fee of various trademark lawyers or agents cannot be the same. By and large, the total cost, including the professional fee for registering a trademark, may range between N150,000(about $400) to N200,000(about $500). Another factor that may determine the total cost of trademark registration is whether the trademark is owned by a local or international company or individual. If the trademark is foreign-owned, a trademark attorney may charge a higher amount than the ones owned locally. Every intending applicant should contact a trademark accredited agent for individual negotiation of the total cost of registration.
Meanwhile, the above-suggested total cost must include all the three essential stages of trademark registration, which are Search, Acceptance and Certification. An applicant seeking to engage an agent to temporarily complete the registration only to the second stage of Acceptance, with an intention of completing the certification stage later, may bargain with an agent for an affordable amount. Some trademark applicants are often after immediate registration. They may engage one attorney for the registration up to the second stage, which involves Acceptance and may later engage another agent for the completion stage, which involves publication and certification. It is strongly advised that any applicant who wishes to appoint a single agent to complete the entire process up to the completion or final stage should specifically mention it to such agent and bargain for the appropriate cost for the entire process.
RENEWAL OF TRADEMARK IN NIGERIA
Trademark lasts for period 7 years and can be renewed after an expiration from time to time. Every subsequent registration lasts for 14 years. The requirements for a trademark renewal are as follows:
- Trademark Certificate
- Power of Attorney appointing the agent and
- Payment of the prescribed fee
ASSIGNMENTS & RECORDING IN NIGERIA
Every legitimate trademark titleholder may assign such trademark to another person or entity for usage within a period of time. An Assignee or Assignor of the trademark right may apply to the trademark office for the recording of such title or right in favour of the Assignee. However, it preferable for the Assignee to carry out the recording itself or himself/herself, since only the holder of a trademark title or right may enforce such aright against any infringing third party. The requirements for trademark recording are as follows:
- Trademark Certificate
- Deed or Agreement assigning the trademark
- Power of Attorney appointing the agent and
- Payment of the prescribed fee
CLASSES OF TRADEMARK
The trademark registration is classified into 45 different classes of goods and services in accordance with the Nice international system of classification. It is important for every applicant to understand the classes the registering trademark belongs to or closely align with.
However, a trademark may be registered in more than one class where the applicant is seeking protection in both classes. And where applicant seeking protection in multiple classes, separate filing fees must be paid for each of the classes. The 45 trademark classes in Nigeria are listed below:
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; unprocessed plastics in the form of liquids, chips or granules.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; combustible fuels, electricity and scented candles.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; unwrought and partly wrought common metals; metallic windows and doors; metallic framed conservatories.
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
Class 8: Hand tools and hand operated implements; cutlery; side arms; razors; electric razors and hair cutters.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; sex aids; massage apparatus; supportive bandages; furniture adapted for medical use.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights and vehicle air conditioning units.
Class 12: Vehicles; apparatus for locomotion by land, air or water; wheelchairs; motors and engines for land vehicles; vehicle body parts and transmissions.
Class 13: Firearms; ammunition and projectiles, explosives; fireworks.
Class 14: Precious metals and their alloys; jewellery, costume jewellery, precious stones; horological and chronometric instruments, clocks and watches.
Class 15: Musical instruments; stands and cases adapted for musical instruments.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; semi-finished plastics materials for use in further manufacture; stopping and insulating materials; flexible non-metallic pipes.
Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals.
Class 19: Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; non-metallic monuments; non-metallic framed conservatories, doors and windows.
Class 20: Furniture, mirrors, picture frames; articles made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or plastic which are not included in other classes; garden furniture; pillows and cushions.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steel wool; articles made of ceramics, glass, porcelain or earthenware which are not included in other classes; electric and non-electric toothbrushes.
Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks for transporting bulk materials; padding and stuffing materials which are not made of rubber or plastics; raw fibrous textile materials.
Class 23: Yarns and threads, for textile use.
Class 24: Textiles and textile goods; bed and table covers; travellers’ rugs, textiles for making articles of clothing; duvets; covers for pillows, cushions or duvets.
Class 25: Clothing, footwear, headgear.
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); wallpaper.
Class 28: Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; childrens’ toy bicycles.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared meals; soups and potato crisps.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches; prepared meals; pizzas, pies and pasta dishes.
Class 31: Agricultural, horticultural and forestry products; live animals; fresh fruits and vegetables, seeds, natural plants and flowers; foodstuffs for animals; malt; food and beverages for animals.
Class 32: Beers; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; shandy, de-alcoholised drinks, non-alcoholic beers and wines.
Class 33: Alcoholic wines; spirits and liqueurs; alcopops; alcoholic cocktails.
Class 34: Tobacco; smokers’ articles; matches; lighters for smokers.
Class 35: Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of goods.
Class 36: Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information.
Class 37: Building construction; repair; installation services; installation, maintenance and repair of computer hardware; painting and decorating; cleaning services.
Class 38: Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; radio and television broadcasting.
Class 39: Transport; packaging and storage of goods; travel arrangement; distribution of electricity; travel information; provision of car parking facilities.
Class 40: Treatment of materials; development, duplicating and printing of photographs; generation of electricity.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, drawing and commissioned writing for the compilation of websites; creating, maintaining and hosting the websites of others; design services.
Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; retirement home services; creche services.
Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; dentistry services; medical analysis for the diagnosis and treatment of persons; pharmacy advice; garden design services.
Class 45: Legal services; conveyancing services; security services for the protection of property and individuals; social work services; consultancy services relating to health and safety; consultancy services relating to personal appearance; provision of personal tarot readings; dating services; funeral services and undertaking services; fire-fighting services; detective agency services.
A patent is an authority or license conferring a right or title on an inventor for a set period of time, especially the right to exclude others from making, using or selling an invention. Patents protect new inventions such as new processes, machines and chemicals.
Patent registration is also handled by the same government department that handles trademark registration, which is the Trademarks, Patents And Designs Registry, Commercial Law Department of the Federal Ministry of Industry, Trade and Investment. Registration of patent requires that an applicant must have invented certain ideas, which can be protected not just a mere expression of it. Patenting an invention gives the holders the legal right to challenge any unauthorized of the invention by a third party.
The requirements for patent registration are different from the trademark registration. An inventor may appoint an attorney to represent him or her for patent registration in Nigeria.
The cost of Patent filing depends on individual patent attorney appointed for the work. By and large, Nigerian patent attorneys charge between N150,000(about US$420) to N280,000(about US$800) for filing and professional fees to complete a single patent registration.
In conclusion, it would be important to mention that there are several benefits accrued to the registration of the trademark and patent in Nigeria. Such benefit includes brand and identity protection from any infringement. Additionally, an owner of a trademark can sell or lease out his or her trademark to another person or organization if the owner chooses in future. It is also possible for the owner of a trademark to allow certain persons or organizations to use his or her registered trademark with him or her in the future.
Companies and individuals that require the services of trademark registration in Nigeria and patent registration are advised to speak to a trademark lawyer or consultant in Nigeria.
By Intellectual Property Law Team at the Resolution Law Firm, Nigeria. Resolution Law Firm is a licensed Trademark and Patent Attorney in Nigeria.
Email: [email protected]