A quickstep guide to trademark law in Nigeria

    By Mark Mordi and Uche Nwokocha, ALN Nigeria | Aluko & Oyebode
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    The principal legislations regulating trademarks in Nigeria are the Trade Marks Act, 1965; the Trade Marks Regulations, 1967; the Merchandise Marks Act, cap M10; the Laws of the Federation of Nigeria 2004 (LFN 2004); and the Trademark Malpractices (Miscellaneous Offences) Act, cap T12, LFN 2004.

    Are trademark rights enforceable in Nigerian courts? Yes, trademark rights are enforceable in Nigerian courts. The owner of a registered trademark may sue to enforce their right of exclusive use of the mark before the Federal High Court of Nigeria and obtain injunctive relief to stop future violations of the trademark. See Ayman Enterprises Ltd v Akuma Ind Ltd & Ors (2003) LPELR-683 (SC).

    Is the common law tort of passing off available under the statute? Yes, section 3 of the Trade Marks Act, 1965, recognises the common law tort of passing off goods as the goods of another, and allows any person to sue for passing off.

    Is there interim relief for the holder of trademark rights seeking their enforcement? Yes, a proprietor may apply for interim injunctive relief to stop, on an urgent basis, the continuing violation of a registered trademark pending the hearing and determination of a suit for the enforcement of trademark rights in Nigeria. See Gallaher Ltd & Anor v BAT (Nig) Ltd & Ors (2014) LPELR-24333 (CA).

    What may be registered as a mark? Section 67 of the act defines a mark to include but not be limited to a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these.

    Mark Mordi, ALN Nigeria | Aluko & Oyebode
    Mark Mordi
    Senior Advocate of Nigeria (SAN)
    ALN Nigeria | Aluko & Oyebode
    Tel: +234(0)803 422 4068
    Email: Mark.Mordi@aluko-oyebode.com

    Are service marks recognised in your jurisdiction? With the amendment of the trademark act by the Business Facilitation (Miscellaneous Provisions) Act, 2023 (BFA), Nigeria now recognises service marks as trademarks for the purposes of registration in the country.

    Does the act cover the shape of goods, their packaging, or the combination of colours? The definition of a trademark has also been expanded by the BFA to include the shape of goods, their packaging, and the combination of colours. With this amendment, what may be registered as a trademark in Nigeria has been expanded.

    Are there unregistrable matters? Matters that are unlawful or contrary to public policy, scandalous designs, names of chemical substances, and marks that are confusing, similar or identical are not registrable as trademarks in Nigeria. The law also precludes geographical names in their ordinary signification from being registered. The grounds for refusal include where the mark is filed by a person not being the true proprietor, applications filed in bad faith, and a mark fraudulently obtained. See sections 11, 12, 13 and 18 of the act.

    Is there a right of appeal on a refusal? Where an application to register a trademark is refused on any grounds, the applicant may file a petition seeking to overturn the refusal within 60 days. Further right of appeal lies in the Federal High Court. See section 18 of the act.

    What are the use requirements? For the purposes of registration, a trademark is not required to be in use in Nigeria in relation to the specific goods or services. The law allows a trademark to be filed where the proprietor proposes to use the same in relation to the goods or services without providing evidence of actual use. However, a trademark on registration is expected to be used, as non-use is grounds for cancellation on application by a third party. Put differently, use is not required at the point of application but is expected after registration. See sections 9 and 10 of the act.

    Are non-distinctive marks registrable? The register in which trademarks are kept is divided into parts A and B. While part A is reserved for marks that are already distinctive, part B covers trademarks which, though not distinctive, can become distinctive while in use. See section 10 of the act.

    Uche Nwokocha, ALN Nigeria | Aluko & Oyebode
    Uche Nwokocha
    ALN Nigeria | Aluko & Oyebode
    Tel: +234(0)703 400 1093
    Email: Uche.Nwokocha@Aluko-Oyebode.Com

    Are disclaimers allowed? An applicant may disclaim any part of his/her trademark that constitutes a non-distinctive element or is descriptive of the goods or services offered. See section 16 of the act.

    What is the procedure for registration? The applicant must conduct an availability search to ascertain if the mark is available in the relevant classes. The application can then be filed and examined, after which an acceptance may be issued. Following the acceptance, the application proceeds to publication. Then a two-month opposition period ensues where any third party is allowed to object to the registration by filing a notice of opposition. Where no opposition is filed within this period, the applicant proceeds to pay the registration (sealing) fee, and then the registration certificate is issued.

    What is the opposition procedure? The opposition is commenced by an interested party filing a notice of opposition. The registry serves the notice on the trademark applicant, who then has a one-month non-extendable deadline to file a counterstatement. On receipt of the counterstatement, the interested party prepares and serves its evidence by way of statutory declaration on the applicant who, in turn, has a period of one month to file and serve its own statutory declaration on the opponent. The opponent has a right of reply. When all processes have been filed, the tribunal issues a date for adoption/argument, and then a ruling is delivered. Appeal lies at the Federal High Court.

    What are the grounds for trademark opposition? Any person may oppose the registration of a trademark in Nigeria on the grounds that the trademark is confusingly similar and/or identical to their trademark as to be capable of causing confusion in trade. It is not mandatory for the opponent’s trademark to be registered in Nigeria. A trademark containing geographical names, or one which is filed by a person not being the true proprietor, or a trademark containing any matter which is unlawful or contrary to public policy, among others, may also be opposed. See sections 11, 13, 18 and 67 of the act.

    What is the timeline for obtaining registration in your jurisdiction? From filing to issuance of the registration certificate, it usually takes an estimated period of 12 to 18 months barring further delays on the part of the registry. Trademark registration takes effect from the date of the application.

    What is the manner of describing goods or services? The trademark office adopts the Nice Classification of goods and services. An applicant may claim the general class headings or adopt a narrow description to fit its purpose.

    Is multi-class filing applicable in your jurisdiction? Nigeria adopts a single-class filing system. Where a trademark is intended to cover multiple classes, each class of interest is required to be filed separately.

    What are the routes to obtaining trademark protection in your jurisdiction? Registration with the Nigerian trademark office is the sole route to obtaining trademark protection in the country as it is not a member of any of the regional IP blocs such as the African Regional Intellectual Property Organisation, or Organisation Africaine de la Propriete Intellectuelle, where protection can be sought through a filing designating Nigeria.

    What are the requirements for filing a trademark in your jurisdiction? To file an application, the registry would require a specimen of the trademark (if not a wordmark) and a simply signed power of attorney. No notarisation or legalisation is required.

    Is it possible to claim priority in your jurisdiction? The act empowers the president of Nigeria to designate relevant convention countries, but the president has yet to make such a declaration. In practice, the registry allows priority claims, provided the trademarks are filed within six months from the international filing dates.

    Does your legislation allow series marks? Yes, the act allows the registration of series trademarks.

    What is the term granted by registration? The initial registration of a trademark in Nigeria is valid for seven years. Thereafter, it is perpetually renewable with each renewal according 14 years.

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