The law, practice and procedure for the registration of Trademark Activities in Nigeria is the Trade Marks Act of 1967 Laws of the Federation of Nigeria 2004(the Act), while the Trademark, Patents and Design Registry under the Commercial Department of the Ministry of Trade and Investment is the authority responsible for the registration of trademarks in Nigeria.
The objective of the Act is to make provisions for all activities such as procedures for the registration of a trademark, validity period for registration, protection of the rights of a proprietor of trademark, renewal of trademark, protection of proprietors’ rights and assignment in respect of trademark.
The highlights of some key provisions of the Act
The Act makes provisions under Section 1 for the Office of the Registrar who shall be appointed by the Federal Civil Service Commission (FCSC) and whose office shall be situated in the Federal Capital Territory Abuja, performing the functions, which are prescribed by the Act. Under Section 4 of the Act, it states that a trademark must be registered in respect of particular goods or class of goods, the class of goods is determined by the registrar and the decision is final.
The Act provides for exclusive ownership of a trademark when registered under Section 5(1) which provides that the registration of a mark by a person in respect of any goods or service if valid gives to the person the exclusive right of use of the trademark in respect of the goods or services. The Act also provides that the exclusive right of ownership of a trademark shall be deemed infringed by any person who not being the proprietor of the trademark or registered owner, uses the mark or a mark so resembling it as is likely to deceive or cause confusion in course of trade in respect of the goods in which the trademark is registered.
Furthermore, the Act makes provisions that in order for a trademark to be registered, it must contain or consist of one or more of the particulars as provided under Section 9 of the Act.
Upon registration at the trademark registry, the Act provides under Section 23(1), the registered trademark shall be valid for a period of 7 years but may be renewed for a subsequent period of 14 years from time to time in accordance with the provisions of the Act. The Act does not provide for any restrictions as the number of times a trademark can be renewed.
On the provision of Assignment of trademark, the Act provides that a registered trademark can be assignable and transmissible in respect of either all the goods in respect of which it is registered or some of those goods, also the Act listed the procedure for transfer which will be provided in the link below. The Act does not prevent a proprietor from assigning or transferring ownership of a trademark to another.
Another important provision of the Act is that Trademark when registered can be removed by the Registrar who has been empowered by the Act, from the register of trademark and the grounds for removal are also provided under various sections of the act and these grounds are summarily listed as follows:
- Non-use: which is provided under section 31 of the act which states that a registered trademark can be taken off the register in respect of any goods where the mark was registered without the intention on part f the applicant to use the mark in relation to those goods. The grounds of removal of a mark in respect of non-use are provided under that section.
- Failure to observe a condition precedent in relation to a trademark
- Failure for a proprietor to renew a mark before its expiration can be a grounds for removal of the trademark as provided under section 23 (3) of the Trade Marks Act.
- A mark can be revoked and removed from the register where it fails the test of distinctiveness as provided under section 9 (2) of the Act.
The Trademark Act is the principal legislation guiding trademark activities in Nigeria, with the Regulatory body being the Ministry of Trade and Investment. The office of the Registrar of Trademark is an important one as it is responsible for all activities carried out in the intellectual properties from the trademark, patent and design.
The provisions of the Act cannot be exhausted in this write up; the highlights are just the summary of its provisions and are no way exhaustive.
To find out more about the provisions of the Act, check the link below.
Email: [email protected]