A trademark is a logo, shape, color, or other design that is used or intended to be used in the sale of goods or services. It distinguished various businesses. The law recognizes it in Nigeria, and it is protected under Trademark law. However, to enjoy all the protections the law provides, it must be registered in the Trademarks Registry, either physically or electronically. Trademark registration procedure in Nigeria is a long and tedious process, and an applicant or agent must gain insight into the requirements and procedures before embarking on the process of registration.
Requirements for trademark registration procedure in Nigeria:
These are things the applicant or agent must know before proper application for a seamless process.
- Applicant’s Details: This includes the name of an individual, company, or address. [i]
- Power of Attorney/Authorisation of The Agent: The proprietor (applicant) of the trademark must execute a power of attorney, reflecting the authorisation of the proprietor for an agent or attorney to act on the proprietor’s behalf. The applicant must sign it and include their name(s), address (es), and nationality of such applicant(s).[ii]
- Classification of Goods: Goods to be protected with the trademark must be classified based on the international NICE classification. See section 5(1) Trademark Regulation 1967. Applications for the registration of the same mark in different classes shall be treated as separate and distinct applications. [iii]
- Logo/ Wordmark Information: This entails a copy of the trademark. It must be clear and distinct. For electronic filings, soft copies are to be provided in jpeg format at a minimum of 1200 dpi. A preferred copy should have the following dimensions: 120px by 100px (length by breath).[iv]
- Filing Fees: Under the Trademark Regulation 1967, the entire process of registration ranges from 4 to 6 naira each. However, considering the increase in inflation over the years and the absence of new legislation, the filing fees are not fixed or inevitable. [v]
- Forms: There are forms for specific purposes for manual applications. For instance, trademark applications are made on Form 2, [vi], while notice of opposition is filed on Form 6. [vii] Furthermore, counter statements are filed on Form 7. [viii] However, filing a trademark registration electronically only requires filling out the online forms during various stages.
- Trademark Registration Forms: A trademark can be registered under parts A and B. The registry regards those under part A as so inherently distinctive that they can distinguish the proprietor’s goods from others. In contrast, those under part B are regarded as merely capable of distinguishing the proprietor’s goods from those of others. Both give exclusive rights to use by the proprietor.
- Registerable Marks: Under the Act, not all trademarks can be registered. For a trademark to be registrable under part A, it must contain any of the following [ix]:
(a) the name of a company, individual, or firm, represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business
(c) an invented word or invented words;
(d) a word or words having no direct reference to the character or quality of the goods, and not being, according to its ordinary signification, a geographical name or a surname;
(e) any other distinctive mark. However, there must be evidence of distinctiveness.
For a trademark to be registrable in part B of the register, it must be capable of distinguishing the proprietor’s goods from that of others.
What can not be Registered?
Deceptive or scandalous marks, names of chemical substances, landmarks identical or similar to another trademark. [x]
Steps involved in Registration
- Trademark Search: Any person may request the registrar on Form 29 to cause a search to be made in respect of specified goods.[xi] Such a search is conducted manually at the Trademarks, Patents and Designs Registry in Abuja. However, a trademark search can be done by an accredited agent or lawyer electronically via the Trademarks, Patents and Designs Registry’s online portal.
- Application: After conducting a search and you are satisfied, the applicant can write to the registrar of trademarks concerning the same through the stipulated procedure.[xii] Such an application must be signed by the applicant or his agent. [xiii] The application can also be made electronically via the online portal. Upon receipt of such an application, the registrar will issue an official acknowledgement incorporating the filing date of the application.
- Examination For Registrability: The registrar will then conduct a search to determine whether such a mark or application complies with all the requirements.
- Publication of the Notice of Application: Upon acceptance, either absolutely or conditionally, of the application by the registrar, the notice of acceptance of the application will be published in the journal. [xiv] However, sometimes, the application can be published in the journal without it being accepted by the registrar. [xv] Where it is eventually accepted, it is at the discretion of the Registrar to accept publish it again in the journal. [xvi]
- Opposition: The publication of the notice of application is an invitation of the members of the public to oppose such an application or registration within two months. [xvii] Such notice of opposition will be sent to the registrar, who will then send it to the applicant and within one month, the applicant is expected to send a counter statement to the registrar. Otherwise, such an application will be abandoned. [xviii] The registrar may demand costs for such a proceeding from the applicant and opposer. Otherwise, the opposition or application will be abandoned. [xix]
- Registration: Upon an unsuccessful opposition or elapse of the time for opposition, the application will be registered under part A or B.[xx] The date of application will be regarded as the date of registration, and the certificate of registration will be issued to the applicant.
Other Important Notes
- Incomplete Registration: Where registration of a trademark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice of the non-completion to the applicant in writing in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
- Duration: A trademark registration lasts for seven years. [xxi] However, upon expiration, it can be renewed for 14 years [xxii] and after every 14 years.
Who Receives Payment?
The Registrar receives all fees and shall pay all fees received by him to the treasury.[xxiii]
Conclusion: To avoid the rejection of an application by the registry, an applicant should ensure that all the requirements and procedures are adhered to. This is essential because successfully registering your mark gives a proprietor so many advantages and adequate protection, like the right to sue for trademark infringement and exclusive use of such a trademark.
[iii] Section 28 Trademark Regulation 1967.
[vi]Section 23(1) Trademark Regulation.
[vii]Section 48 Trademark Regulation 1967.
[viii]Section 58(1) Trademark Regulation 1967.
[ix]Section 9 Trademark Act.
[x]Section 11, 12, 13 Trademark Act.
[xi]Section 118 Trademark Regulation.
[xii]Section 18(1) Trademark Act.
[xiii]Section 23(1) Trademark Regulation.
[xiv]Section 19 Trademark Act.
[xv]Section 19(2) Trademark Act.
[xvi]Section 19(3) Trademark Act.
[xvii]Section 20(1) Trademark Act
[xviii]Section 20(1) & (2) Trademark Act.
[xix]Section 20(5) Trademark Act.
[xx]Section 22 of the Act.
[xxi]Section 23(1) of the Act.
[xxii]Section 23(2) of the Act.
[xxiii]Section 3 Trademark Regulations.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.