1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The statutes governing trademark rights in Nigeria are:
- the Nigerian Trade Marks Act (TMA) Cap T13 (Laws of the Federation of Nigeria (LFN) 2004);
- the Merchandise Marks Act Cap M10 LFN 2004; and
- the Nigerian Trade Mark Regulations 1967.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights may arise both through use and through registration. The owner of an unregistered trademark can acquire goodwill or brand reputation through the use of a distinctive mark. However, unless a trademark is registered in Nigeria, the owner shall not be entitled to institute any proceedings to prevent, or to recover damages for, infringement. A trademark must be registered in respect of particular goods or classes of goods. Upon registration of a mark, the owner is given the exclusive right to use that trademark in relation to those goods.
1.3 What is the statutory or other source of the trademark registration scheme?
Trademarks are registered at the Nigerian Trade Marks Registry. The registry is bound by the statutory laws listed in question 1.1.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Any mark, word(s), design, device, label, numeral(s) or combination thereof which is distinctive or has acquired distinctiveness can serve as a trademark identifier or designation.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
For a designation or other identifier to function as a trademark, it must:
- be distinctive or must have acquired distinctiveness in relation to goods or services in the course of trade; and
- indicate a connection between such goods or services and the party which has the right, either as the owner or as a registered user, to use the mark.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
The following cannot function as trademarks:
- deceptive marks which are likely to mislead and/or misinform the buying public;
- scandalous marks which are contrary to law or morality;
- vulgar and disparaging marks;
- names of chemical substances;
- marks which are identical to or which closely resemble an existing trademark and are thus likely to deceive or cause confusion; and
- the Nigerian coat of arms or other emblems or insignias of governmental authorities.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The registration procedure for trademarks in Nigeria is controlled and regulated by the Nigerian Trade Marks, Patents and Designs Registry, under the Commercial Department of the Ministry of Trade and Investments.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The official fees charged by the Trade Marks Registry in Nigeria may be broken down as follows:
- official fee for a single trademark registration in one class – approximately $41.66; and
- official clearance search fee – approximately: $4.16.
Other ancillary costs may also be incurred.
3.3 Does the trademark office use the Nice Classification scheme?
Yes, the Trade Marks Registry adopts the Nice Classification scheme in the registration of trademarks in Nigeria. Trademarks may be registered for goods or services.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
It is permissible to claim protection under the whole class heading; if this is claimed, the protection will cut across the whole class. Alternatively, if a specific line of goods or services is being targeted, a narrower description may be preferred.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
An applicant is expected to register only a trademark which it has a bona fide intention to use; otherwise, the lack of intention will indicate non-use attributable to the registrant and the mark, upon being challenged, may be struck off the Trade Marks Register as abandoned.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Yes, upon request and payment of the requisite fees, the Trade Marks Registry will conduct a preliminary search to confirm the availability of the mark. An application may still be made without conducting a search, but there is a risk that it will be refused registration if, in the process of registration, it is discovered to conflict with an existing mark.
3.7 What types of examinations does the trademark office perform other than relative examination?
Apart from the examination conducted to determine whether the trademark does not conflict with any other registered trademark, no other examination is carried out by the Trade Marks Registry.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes – see question 2.3.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
No, but the law allows for registrations in either Part A or Part B of the Trade Marks Register. A descriptive mark may be registered in Part B of the register if it is capable of distinguishing the products in respect of which registration is sought from other products. Before filing an application, the trademark owner may seek the registrar's preliminary advice on whether its mark is registrable in either Part A or Part B.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
The statutory timeframe for an objection/opposition is two months after publication of the application in the Trade Marks Journal. While an application may be objected to in writing before the opposition stage, the registrar is at liberty to direct that the party making such objection wait until the opposition period and file an opposition accordingly. A third party may also send a cease and desist letter to dissuade the trademark owner from proceeding with the registration.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
An applicant need not have used the trademark commercially in order to obtain registration; intent to use is considered sufficient to obtain registration of the mark.
3.12 How much time does it typically take from filing an application to the first office action?
For online applications, acknowledgements are immediately available upon payment of filing fees. Otherwise, on average, it takes approximately five to 10 working days to obtain an acknowledgment for a manual application, and five to 10 working days for the acceptance letter to be issued.
3.13 How much time does it typically take from filing an application to publication?
On average, 18 to 24 months.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
If registration is refused, the applicant can appeal this decision to the registrar of trademarks and further to the Federal High Court.
4.2 What is the procedure for appealing a trademark office refusal?
Upon refusal, the applicant may request that the registrar state in writing the grounds for this decision and the materials relied upon in arriving at this decision. The applicant can lodge an appeal at the Federal High Court of Nigeria; the court will hear the appeal and make an order determining whether the application should be accepted.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
A decision of the Federal High Court may be appealed to the Court of Appeal and further to the Supreme Court of Nigeria.
5.1 Can a third party oppose a trademark application?
Yes, a third party can oppose registration of a trademark after publication by filing a notice of opposition stating the basis for the opposition.
5.2 Who has standing to oppose a trademark application?
Any interested person (including third parties) may give notice of an intention to oppose a trademark application.
5.3 What is the timeframe for opposing a trademark application?
Oppositions must be lodged within two months of publication of the trademark in the Trade Marks Journal.
5.4 Which body hears oppositions?
The registrar of trademarks or his designee is responsible for hearing and deciding on an opposition.
5.5 What is the process by which an opposition proceeds?
The procedure involves the issuance of a notice of opposition by the opponent setting out the basis for the opposition. The applicant has one month to file a counterstatement indicating the grounds on which it relies for its application. The application will be deemed abandoned if the applicant fails to file a counterstatement within the specified timeframe. If the applicant files a counterstatement, the registrar will send a copy of the counterstatement to the opponent and the parties will then exchange statutory declarations in the form of evidence. If no additional evidence is adduced, the registrar shall subsequently give notice of hearing and the matter shall be decided based on the documentary evidence, as well as submitted judicial and statutory authorities.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
The decision of the registrar of trademarks can be appealed to the Federal High Court and is reviewable by that court in the form of an administrative appeal.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
In case of infringement, the owner of an unregistered trademark can bring an action for passing off before the federal high courts either alone or as part of an infringement action (Section 3 of the Trade Marks Act). For a claim of passing off to succeed, the claimant must prove that it has acquired goodwill in the relevant goods or services, and that there has been a misrepresentation from which it has suffered injury.
6.2 What legal rights are conferred by a trademark registration?
A registered trademark confers on the owner the exclusive right to use the mark and the right to sue for infringement in the event of unlawful use. It further serves as constructive notice to the public and as prima facie evidence of the ownership and validity of the trademark. A registered trademark also affords the owner the following rights:
- to obtain a court order (injunction) to stop unlawful use by an infringer;
- to grant a licence to another to use the registered trademark in return for licence fees, royalties or other payments;
- to assign the trademark;
- to bequeath the trademark in a will; and
- to achieve incontestable status after a seven-year period under Section 14(1) of the Trademarks Act.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
See question 3.9. Owners of trademarks registered under Part B of the register enjoy similar rights as owners of trademarks registered under Part A. These rights include the exclusive right to use the registered mark in Nigeria in relation to the goods or services for which it is registered and the right to prevent infringement. However, in an infringement action, the owner of a trademark registered under Part B is not entitled to an injunction or other relief where the defendant establishes that the alleged offending mark is unlikely to deceive or cause confusion among consumers.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
- Damages – punitive, special and general damages;
- Injunctions – preliminary and final injunctions restraining current and future acts of infringement;
- Delivery up for destruction of infringing articles and items;
- Account of profits; and
- Costs of the action and solicitors' fees.
7.2 What remedies are available against trademark dilution?
There is no provision for trademark dilution in the current Trade Marks Act. However, it may be inferred that the remedies attributed to trademark infringement will also apply to trademark dilution.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
In addition to an action for infringement, the Trade Marks Act implicitly recognises the right to maintain an action for passing off where an unregistered mark has been adopted or copied without permission (Section 3 of the Trade Marks Act).
7.4 What is the procedure for pursuing claims for trademark infringement?
Parties must file their claims in the form of pleadings at the federal high court, along with the following documents:
- written witness statements on oath;
- copies of all documents to be relied on during trial; and
- a list of non-documentary exhibits.
Once pleadings have been exchanged by all parties to the action, the court will set a date for trial if there are no pending interlocutory applications which must first be determined.
7.5 What typical defences are available to a defendant in trademark litigation?
The following grounds of defence may be raised:
- bona fide use of a mark that is identical or similar to the registered trademark for a continuous period pre-dating the use or registration of the registered trademark by the registered owner;
- bona fide use by a person of his or her name or the name of his or her place of business, or that of his or her predecessor in title;
- bona fide description of the type or quality of the alleged infringer's goods;
- non-registration and/or invalidity of the claimant's trademark;
- absence of a likelihood of deception, where the streams of distribution or specifications of goods or services are distinct;
- permitted use, consent or acquiescence;
- fair use;
- honest concurrent use; and
- abandonment or non-use of the trademark by the registered owner, or non-renewal by the owner.
7.6 What is the procedure for appealing a decision in trademark litigation?
A decision of the Federal High Court may be appealed in the first instance to the Court of Appeal and thereafter to the Supreme Court. Appeals can be on points of law or facts, or a mix of facts and law. A notice of appeal setting out the grounds for appeal is filed at the lower court and the registrar of the court shall ensure the notice of appeal is served on the parties. The registrar of the lower court shall also compile and transmit the records of the suit or appeal to the appellate court. A respondent that intends to challenge the appeal must file a respondent's notice of appeal or a cross-appeal, as the case may be; the parties will file their briefs of argument thereafter.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
In Nigeria, trademarks have an initial validity period of seven years and can be renewed indefinitely thereafter for 14-year periods as long as the mark remains in use.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
To renew a trademark registration in Nigeria, the following must be filed at the Trade Marks Registry:
- an application for trademark renewal;
- the particulars of the applicant;
- power of attorney;
- the certificate of registration of the trademark; and
- evidence of payment of the prescribed renewal fee
8.3 What are the grounds for cancelling a trademark registration?
The following are grounds for revocation or cancellation of a trademark:
- non-use – this occurs when the applicant registers the trademark without any bona fide intention to use the mark or fails to use the mark for a period of five years following its registration;
- failure to observe a condition precedent entered on the register in relation to a trademark;
- failure to renew an expired trademark registration; and
- lack of distinctiveness – where it is alleged that the mark is descriptive or generic and was registered in error, or is deceptive, confusing and/or misleading.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
Once a trademark has been registered, it can be cancelled if:
- the registration was issued in error and without sufficient cause;
- the mark wrongfully remains on the register; or
- the mark was obtained by fraud or misrepresentation of facts.
If the mark is deceptive, scandalous or contrary to law or public morality, a court of law may invalidate it.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
An application in the prescribed format should be made to the registrar when the procedure is instigated at the instance of a registered owner, registered user or other interested/concerned person(s), stating the grounds and particulars for seeking invalidation. The owner of the mark is entitled to be placed on notice and given the opportunity to respond to the allegations.
8.6 What is the procedure for appealing a decision cancelling a registration?
See question 5.6.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
The Trade Marks Act does not prescribe the inclusion of quality control clauses in licence agreements as a basis on which a registered user agreement can be filed.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
Yes, a trademark licence must be registered with the Trade Marks Registry by the licensee and the registered owner by filing the prescribed form and paying the prescribed fees.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
No, there is no requirement under Nigerian law. The licensee may sue for breach of terms of the licence.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
By means of a passing off action based on acquired prior goodwill, distinctiveness and pre-existing claims of right. An action can also be maintained against counterfeiters for false designations of origin or misleading trade descriptions as applied to goods and merchandise in the sale of goods.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
The Trade Marks Act does not provide for this.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.