04-02-2013 (Newsletter Issue 4/13)New IP Office PractiseThe IP Registry in Nigeria will no longer tolerate delays in responding to trade mark registration oppositions. According to the circular, the Registry will not grant an extension of time more than once and not for a longer period than 30 days.
Further, in respect of registered designs, the Registry now requires applicants to describe the novelty in their design applications. FORM 2 must forthwith contain the name(s) of the signatory who signs on behalf of the company or Agent submitting applications to the Registry.
For more information, please access the circular here
Source: Aluko & Oyebode, Nigeria
06-06-2011 (Newsletter Issue 8/11)TM Online Registration PossibleThe Commercial Law Department of the Ministry of Commerce and Industry of Nigeria has launched its online registration portal for registration of trademarks, patents and designs.
The service provides:
- Online search application
- Online registration of trademarks, patent and design
- Online payments for services
- Online application for certificates
For more information please click on www.iponig.comSource: www.iponig.com
05-09-2010 (Newsletter Issue 10/10)
New Trade Mark Journal Released
The local Registry of Nigeria has published a new Trade Mark Journal. Interested parties may object to published marks within a non extendible two month period (expiring on 31 May 2010).
The Nigerian Registry releases its journals only annually.
Legal basis is Chapter 436 of the Trade Marks Act of 1965, which has since been re-printed under the same Chapter in Volume XX111 Laws of the Federation of Nigeria 1990.
Service marks were introduced in Nigeria on 30 March 2007.
On this date the goods and services were extended to 45 classes.
There are various schools of thought as to whether the introduction of service marks through a Ministerial Directive is proper and lawful; be that as it may, presently, service marks can be registered in Nigeria.
A trademark must consist of the following essential particulars before it can be registered in Nigeria:
a) The name of a company, individual, or firm, represented in a special way 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.
The different categories of registration are: ordinary trademarks, collective marks and certification marks.
An Applicant desirous of obtaining a trade/service mark registration in Nigeria will be required to submit an application accompanied with the prescribed fees to the relevant Registry. Where the Applicant is resident outside Nigeria, the application must be made through a local Agent. On receipt of the application, the Registrar will issue the Applicant with a "Letter of Acknowledgement" and the application will be forwarded to the Examiner for formal and substantive examination.
If the application is accepted by the Examiner, the Applicant will be issued with a "Notification of Acceptance" informing the Applicant of the acceptance. However, if the Examiner objects to the registration of the application, the Applicant will be informed and he may choose to contest the objection by requesting for an office hearing or abandon the application completely. Where the application is accepted or if the Applicant succeeds at the office hearing, the application will be advertised in the Trade Marks Journal where any interested member of the public is given two (2) months from the date of advertisement to oppose the registration of the application.
If the advertised application is un-opposed within the stipulated period or if the Applicant succeeds at a subsequent opposition hearing, the Registrar may proceed to issue a certificate of registration after the prescribed form and certificate fee have been filed and paid respectively by the Agent.
A separate application accompanied by a non-legalized or notarized Power of Attorney must be lodged for each class each application made irrespective of the number of classes in which they are intended to be filed.
The trade mark registry publishes the Trade Marks Journal periodically without having a particular schedule or frequency for the publication. In recent years however, it has been publishing between 1 and 4 journals per year.
Any objection to the registration of an application advertised in the Trade Marks Journal must be lodged by way of a Notice of opposition within two (2) months from the date the application was published in the journal. Service of the notice of opposition must be done through the office of the Registrar; accordingly, on receipt of the notice of opposition as filed, the Registrar is mandated to serve a copy to the Applicant, who has one (1) month from the date of service to file a respond. Failure to file a respond within the prescribed one month will result in the application being deemed abandoned.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 7 years from the date of application. Renewal is possible for periods of 14 years.
Pre-registration use is not a requirement for registration.
A registered trade mark may be taken off the register in respect of any goods in respect of which it is registered, if up to the date one month before the date of the application a continuous period of five (5) years or longer elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to the goods. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The official fees from first filing to registration of a trademark are about EUR 140.00 per class.
Trademark Licence Agreement
The Trademark Marks Act only provides for licensing of registered trademarks. Licensing of unregistered trademarks is guided by the general principles of contract. A licence for a registered trade-mark must be in writing for purposes of its recordal. A user can be registered in respect of all or some of the goods for which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence. Termination may be regulated by the licence agreement. There are no statutory provisions prescribing the terms of trademark licensing.
There are provisions in law for the recordal of a licensee as “registered user” in the Trademark Register. Recordal is not mandatory, but advisable for evidentiary purposes. In the event of non-recordal, use by the licensee will not be attributed to the owner. There is no time frame for a recordal.
The following documents are required for a recordal:
Form 47, a statutory declaration and statement of case, authorisation of agent, and a duly stamped registered user agreement. The statutory declaration by the proprietor or by an authorised person shall state particulars of the relationship between licensor and licensee and of the degree of control to be exercised by the proprietor over the permitted use, whether it is an exclusive licence or not, the respective goods or services, any conditions or restrictions of the licence and the duration of permitted use.
The licence becomes effective on the commencement date as provided for in the licence agreement and becomes enforceable against third parties from the date of entry of the registered user. The licence is not required to be published.
Recordal is prima facie proof of permitted use. The registered user may join the proprietor in infringement proceedings. He may also call upon the owner to institute infringement proceedings. If the owner refuses or neglects to do so, the registered user can institute proceedings in his own name after two months and cite the proprietor as co-defendant. A proprietor cited as a co-defendant shall not be liable for costs, unless he enters an appearance and takes part in the proceedings.
Where the licence agreement with a foreign party would involve repatriation of funds, it must be registered with the National Office for Technology Acquisition and Promotion (NOTAP). The body evaluates all agreements with foreign parties and issues a certificate to the licensor.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
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We would like to thank the following law firms for their assistance in updating the information provided:
09-09-2011Lexx & Sophy
, Lagos, Nigeria
STILLWATERS LAW FIRM, Lagos, Nigeria
WizeCounzel Law Firm, Lagos, NigeriaLicensing
12-15-2011Lexx & Sophy
, Lagos, Nigeria
STILLWATERS LAW FIRM, Lagos, Nigeria
WizeCounzel Law Firm, Lagos, Nigeria