Trademarks Registration in Nigeria: A Guide for Businesses

Introduction

Owning a trademark in Nigeria involves following due process, meeting certain requirements, and enjoying its protection. Any person or association wishing to own a trademark must register it and familiarize themselves with the requirements for such registration.

What is a Trademark?

A trademark can be a word, phrase, symbol, design, or a combination of these elements that identifies your goods or services. It helps customers recognize you in the marketplace and distinguishes you from your competitors.[1]

Why is Trademark Registration important for a Business?

Most businesses make the mistake of relying solely on registering their business with the Corporate Affairs Commission as the only layer of protection their business needs. After registering your business, you should trademark any name, word, phrase, slogan, or logo that identifies your product or services in the market, including your business name if it will be used to identify your goods or services, for the following reasons:

1. Safeguarding Your Business from Infringement Lawsuits: Registering your trademark protects your business from unintentionally infringing on another business’s trademark. If you fail to register, you risk facing lawsuits, which can result in substantial financial losses. Legal battles over trademark infringement can drain your resources and damage your business’s reputation. You can avoid this risk by conducting a diligent trademark search and registering in relevant locations.

For instance, in 2016, the organizers of TechPlus in Nigeria faced a lawsuit from Pinnacle Africa over the use of the name "TechPlus." Pinnacle, which had registered the trademark "Tech+," claimed that its rights were being violated and sought compensation for the infringement.

2. Legal Protection of Your Trademark: Once a trademark is registered, the owner has exclusive rights over the use of that trademark in connection with the goods or services for which it is registered. This legal protection allows the owner to seek remedies such as damages, injunctions, and other relief in case of infringement.

Unregistered trademarks can still be protected under common law, typically through an action of passing off. This means that if a business can prove that it has established a reputation with the trademark, it can stop others from using a similar mark if it causes consumer confusion or damages the business’s reputation. However, this protection is more limited compared to registered trademarks, and the burden of proof is higher.

3. Brand Recognition: Trademarks help distinguish a company’s products or services, building brand recognition and consumer trust. A registered trademark can become a powerful marketing tool, enhancing customer loyalty.

4. Asset Value: A registered trademark serves as an intangible asset that can appreciate over time in value. Businesses can sell, license, or franchise it, potentially generating revenue and increasing the overall value of the business.

How to Register a Trademark in Nigeria.[2]

The Trademarks, Patents and Designs Registry, Commercial Law Department of the Ministry of Trade and Investment registers trademarks in Nigeria. The process for registration of trademarks is:

1. Conducting an Availability Search

The initial step in registering a trademark in Nigeria involves conducting an availability search at the Trademark Registry. This search determines whether the proposed mark conflicts with any existing trademarks and if it is available under the relevant trademark class. Once the search confirms that the mark is available for registration, the trademark application process can begin.

2. Filing of The Trademark Application

After confirming the proposed trademark’s availability, the applicant must complete the application form with the required details and submit it with the necessary documents. The information and documents that are required at this stage include:

i.               The name, representation, or prints of the proposed trademark.

ii.             The name of the applicant.

iii.           Contact details of the applicant (address, phone number, and email).

iv.            An executed Power of Attorney (if applicable).

v.             A Letter of Authorization for the use of specific word(s) (if applicable).

You must file trademark applications in the appropriate class. Nigeria uses the Nice International Classification of Goods and Services under the Nice Agreement of 1957. According to the NICE classification, the system groups goods and services into several classes. [3]

Failure to register your trademark in the appropriate class can lead to a loss of protection. The practice is to instruct a local Attorney/Agent in Nigeria, who would file and process applications at the Nigerian Trademark Registry. 

3. Acknowledgment and Acceptance Letters

When an application for the registration of a trademark is made to the trademark registry, the registry will do an assessment of the application to see if it is in line with the requirements before accepting the application. The Registrar of Trademarks will issue an Acknowledgment Letter once the application is received. Where the application meets the requirement, an Acceptance Letter will be issued to the applicant. This letter serves as preliminary proof of the registration and will subsequently be published in the Trademarks Journal.

4. Publication and Issuance of Certificate

In the final stage, the Registry publishes the trademark in the Trademarks Journal. If no objection is raised within two months of publication, the Registry issues a Certificate of Registration to the applicant.

When to Register Your Trademark?

It is advisable to register your trademark before the commencement of operations. This is because early registration confers some benefits such as:

1. Prior use Protection:

 Nigeria operates on a first-to-file basis. However, prior use can be a valuable defense in case of disputes. Registering your trademark early can establish your priority.

2. Preventing infringement: Early registration can deter others from using similar marks, thus reducing the risk of infringement and expensive legal battles.

3. Brand protection: A registered trademark provides a strong legal shield to protect your brand identity and reputation and registering early guarantees that protection from the early days of your business.

What Trademarks are Registerable?

The following are the kinds of trademarks that are registerable:

1. The name of a company, individual, or firm, is represented in a certain manner.

2. The signature of the applicant for registration or that of his predecessor.

3. An invented word or invented words.

4. A word or words which do not directly refer to the character or quality of the goods and are not also following its ordinary signification, its geographical name, or surname.

5.  Any other distinctive mark is acceptable under the Act.

 Trademarks that are Non-Registerable: [4]

The Registry will not register the following marks in Nigeria;  Marks that are

1.     Found to be likely to deceive or cause confusion, or

2.  Are scandalous

3. The name of a chemical compound

4. Are identical to or resembling an existing and registered trademark.

Renewal of Registration: [5]

The registration of the trademark is valid for 7 (seven) years, after which it is to be renewed. Each subsequent renewal is valid for 14 (fourteen) years.

Assignability and Transferability of a Trademark[6]

A trademark can be assigned with or without the goodwill of the business, either for all goods or services or for specific ones. It may be assigned in the following ways: (i) with all the goods of the business, (ii) with particular goods or services of the business, or (iii) with the goodwill of the business. In cases where the assignment is without goodwill, the Registrar may require the assignment to be advertised in the Trademarks Journal before approval.

Removal from register [7]

The Registrar reserves the right to remove a trademark from the register, one reason being for non-use. The proprietor or a third party can orchestrate the removal from the register for reasons of non-use. A third party can initiate removal for any of the following reasons:

1.     The proprietor registered the trademark without any genuine intention to use it for the specified goods and has not used it for those goods at any time up to one month before the application date.

2.     A continuous period of five years or more passed from the date of registration to one month before the application date, during which the trademark owner did not use the trademark in connection with the goods for which it was registered

3.     Other reasons for removing a trademark from the register include failing to renew the trademark, obtaining trademark certification through fraudulent means, or discovering that the trademark is scandalous or deceptive.

Conclusion

Registering your business alone is insufficient; you must also take proactive measures to protect your trademark. Safeguarding your trademark can be complex, as it involves not only the initial registration but also the ongoing management of your trademark portfolio to defend against infringement, potential removal from the register, and expiration.

La Peritum Law Practice is a registered trademark agent in Nigeria and can assist you in navigating the complexities of trademark protection. For inquiries, please email us at enquiries@laperitum.com or click here to contact us directly.

[1] USPTO “What is a Trademark” https://www.uspto.gov/trademarks/basics/what-trademark   Accessed September 20, 2024

[2]ICLG “ Trademarks Laws and Regulations Nigeria, 2024” https://iclg.com/practice-areas/trade-marks-laws-and-regulations/nigeria ,> Accessed on September 20, 2024

[3] NICE Classification Publication, Version 12 https://nclpub.wipo.int/enfr/?basic_numbers=show&class_number=15&explanatory_notes=show&gors=&lang=en&menulang=en&mode=flat&notion=&pagination=no&version=20240101<Accessed on November 7, 2024>

[4]  ICLG “ Trademarks Laws and Regulations Nigeria, 2024” https://iclg.com/practice-areas/trade-marks-laws-and-regulations/nigeria ,> September 20, 2024

[5] IPcoster “Trademark in Nigeria” ,https://www.ip-coster.com/IPGuides/trademark-nigeria#:~:text=The%20validity%20term%20of%20a,expiration%20date%20of%20the%20registration Accessed on September 20,2024

[6] ICLG “ Trademarks Laws and Regulations Nigeria, 2024” https://iclg.com/practice-areas/trade-marks-laws-and-regulations/nigeria , Accessed on September 20,2024

[7].ICLG “ Trademarks Laws and Regulations Nigeria, 2024” https://iclg.com/practice-areas/trade-marks-laws-and-regulations/nigeria , Accessed on September 20,2024