Sep 05, 2019 (Newsletter Issue 12/19)
New Trade Mark Opposition Tribunal
On June 19, 2019, the Permanent Secretary of the Federal Ministry of Industry, Trade and Investment inaugurated a new Trade Mark Tribunal, with the view of accelerating oppositions and related matters.
The new Trade Mark Tribunal will function as the administrative arm of the Registry of Trade Marks and the idea is that, in practice, the Registrar of Trade Marks will delegate this administrative function to competent officers while under the supervision of the Registrar.
It is to be hoped that the Tribunal will expedite the dispensation and resolution of opposition matters in Nigeria and eliminate the current backlogs in opposition matters.
Source: www.adams.africa
Nov 15, 2018 (Newsletter Issue 19/18)
Registry to be Divided Soon
Nigeria confirmed that the Registry of Trademarks, Patents and Designs will be divided into two registries. The following registries are planned in due course:
- Patents and Designs Registry, housed by the Patents and Designs Unit of the Commercial Law Department of the Ministry the Federal Ministry of Industry, Trade and Investment.
- Trademarks Registry, housed by the Trademarks Unit of the same department
This decision is confirmed in a letter from the Head of the Civil Service of the Federation to the Permanent Secretary of the Federal Ministry of Industry, Trade and Investment dated October 22, 2018.
Source: www.spoor.com
Jul 12, 2016 (Newsletter Issue 13/16)
New Defense Mechanism Against Online Trademark Infringement
Trademark owners have a new defense mechanism available in the fight against online infringement and counterfeiting in Nigeria. The Cybercrime (Prohibition, Prevention ETC) Act, 2015 deals with a whole range of cyber issues such as computer fraud and cyber- terrorism, as well as trade mark matters.
Section 25, which is entitled ‘Cybersquatting’, makes it an offence to use ‘on the internet or any other computer network’ any ‘name, business name, trademark, domain name or other word or phrase’ that is ‘registered, owned or in use by’ another party, in cases where that use was unauthorised, intentional and ‘for the purpose of interfering with’ the lawful use. A conviction can lead to imprisonment of up to two years and a fine of up to Naira 5,000,000 (approximately USD 25,000), or both. Interestingly, the court can also order the offender to ‘relinquish’ the trade mark or name to the ‘rightful owner’.
What this means is that owners of registered and other trademarks or names can now lodge criminal complaints against online infringers, and possibly even have registrations transferred to them. The benefit of criminal proceedings, of course, is that the trademark owner does not incur legal costs. It needs to be seen whether the Nigerian authorities are willing and able to prosecute offences of this nature.
Source: Spoor & Fisher, South Africa
Sep 29, 2015 (Newsletter Issue 15/15)
Digitisation of Trademark Records
The Nigerian Registry of Trademarks, Patents & Designs recently issued an important notice dealing with their data capture project. According to the notice, the long-overdue digitisation of the Nigerian trade mark database will start on October 1, 2015, despite a number of ‘false starts’.
The World Intellectual Property Organisation (WIPO) is involved in the process, and a company called Trigyn Technologies has been appointed as the IT service provider.
According to the notice, the aims of the project are wide-ranging. It is hoped that the project will ‘modernise and accelerate work process and service delivery’, increase ‘the credibility of documents issued by the Registrar’, ‘facilitate the conduct of electronic searches’, and ‘boost the confidence of investors in the Nigerian economy.’ The notice ‘implores’ all trade mark owners and IP agents to ‘demonstrate understanding and co-operation while the process lasts, and to ensure that all their records with the Registry are promptly updated and/or renewed on /or before September 28, 2015.’
It is unclear exactly what ‘updating’ the Registry has in mind. It is assumed that there is nothing that trade mark owners need to do at this stage.
Further, it can be reported that the Nigerian Registrar stated in a recent meeting the following:
- Trade mark acceptance notices will in future be issued within one month of filing. This will apply to all applications, including those for marks for which product approvals or registrations are required under the National Agency for Food & Drug Control (NAFDAC), such as applications in classes 1, 3, 4, 5, 10, 29, 30, 32 and 33.
- Trade mark journals will in future be issued more frequently.
- The Registry will look into the possibility of speeding up the issuance of certificates of registration, as it is aware of the fact that fake certificates are sometimes issued because of the delays.
Source: Spoor & Fisher, South Africa
Sep 02, 2014 (Newsletter Issue 13/14)
Trademark Application Procedures Tightened Up
The Nigerian Registrar of Trademarks (and Patents and Designs) is conducting a campaign to tighten up procedures throughout the Registry.
Under the Regulations, official actions are to be notified in writing, and unless within two months the applicant (or agent) applies for a hearing or makes a considered reply in writing the application shall be deemed to have been withdrawn. For many years that time limit has not been enforced and responses have been entertained after substantial delay. The Registrar has now made it clear that responses, received after the statutory term, will be disregarded and the application treated as abandoned.
The Regulations contain provisions for this time limit, like others, to be extended at the Registrar’s discretion and it is generally accepted law that an authority such as the Registrar must actually exercise her discretion, and may not pre-determine that extensions of time will never be granted. Evidently also, pending applications where responses are already overdue will have to be considered on a reasonable basis.
The above points are under discussion with the Registrar. It is nevertheless noted for general information that, in future, extensions of time beyond the prescribed two months will at best be difficult to secure without very good reasons and (predictably involving hearings), expensive as well.
The good news from Nigeria on the Intellectual Property fron includes:
1) A general strategiy to improve the operations and records in the Industrial Property Office.
2) The enhancement of copright protection.
Source: Spoor & Fisher, South Africa
Feb 18, 2014 (Newsletter Issue 3/14)
Intellectual Property Automated System Launched
The Nigerian Federal Government launched an Intellectual Property Automated System (IPAS) on 24 January 2014 in order to improve the integrity and standards of Intellectual Property applications. The IPAS is a world acclaimed system of automated processing of applications for the registration of trademarks, patents and industrial designs.
Source: www.fmi.gov.ng and www.nlipw.com
Apr 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 Jun 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 May 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.
Source: www.afro-ip.blogspot.com
Legal bases are the Trade Marks Act No. 29 of 1967 (Cap T13, Laws of the Federation of Nigeria, 2004); the Merchandise Marks Act, 1916 (Cap M10, Laws of the Federation of Nigeria, 2004); the Trade Marks Regulations, 1967 and the Business Facilitation (Miscellaneous Provisions) Act, 2022. Since 1967, Bills to amend the Trade Marks Act that have been drafted, but none of the Bills has been finalised or promulgated into Law.
Member of the Paris Convention and the TRIPS.
Initially, the Trade Marks Act of 1967 provided for the registration of trademarks in relation to goods only. In 2007, the Minister for Trade & Investments issued a regulation incorporating the registration of service marks; but more significantly, the National Assembly promulgated the Business Facilitation (Miscellaneous Provisions) Act, 2022, in 2023 and this new law amended part of the Trade Marks Act No. 29 of 1967 by expanding the meaning of a trademark to include “services”. Consequently, it is now possible to file trademark applications for goods and/or services.
Section 9 (1) of the Trade Marks Act of 1967 provides that a registrable trademark must contain or consist of at least one the following essential particulars:
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.
Combination of colours and single colours can be registered in Nigeria if they are distinctive or have acquired distinctiveness through intensive use. If and so far as a trademark is registered without limitation of colour, it shall be taken to be registered for all colours. Where a trademark is registered in black & white, it affords protection to all other colors of presentation of the trademark, unlike where a trademark is registered in a particular colour.
Though the Registry accepts applications for the registration of certification and collective marks in Nigeria, however they are registered as ordinary marks and there is no endorsement on the certificates of registration that are issued by the Registry to indicate whether they are certification or collective marks.
The application is filed at the Nigerian Registry of Trade Marks, Patents and Designs, Abuja either manually or electronically (online) via the Registry’s portal
Nigeria is a single class jurisdiction, and a separate application must be filed for each class, in which the applicant desires to register his mark, irrespective of the number of classes. In other words, application is "one trademark per class".
A simply signed power of attorney/authorisation of agent form is necessary for local attorneys or agents who file for the application.
After the filing of the application, an official 'Acknowledgement Form' which reflects the official number and filing date of the application is issued by the Registrar.
The Registrar then carries out a preliminary search for distinctiveness from pending applications and existing registrations. That is, the application is examined by considering potential conflicts with prior registered marks or pending applications. Inherent unregistrability of the mark is also taken into consideration.
A letter 'Notice of Acceptance' is furnished to the applicant if the trademark is accepted for registration; or a ‘Notice of Refusal’ if the Registrar refuses the application.
Where accepted, the trademark application is then advertised in the Nigerian Trade Mark Journal.
If no opposition is lodged against the said trademark application within two months from the date of publication of the application in the journal, a certificate of registration is then issued by the Registrar upon application and payment for same by the applicant. Extension of the opposition deadline is not possible.
The date of initial filing is the date that is indicated on the official Acknowledgement Form that is issued by the Registrar and it is taken as the legal date of registration of the trademark, irrespective of how long it takes to complete the registration.
Applicants should bear in mind that there are two platforms for filing trademark applications in Nigeria, the online and manual platforms. As a result of the introduction of the e-filing system, the manual platform is rarely used. It usually takes between 12-18 months to register a trademark online in Nigeria where there are no oppositions, queries, administrative or technical hitches and where the Trade Mark Journal is published regularly; however, it takes a much longer period to register a trademark manually.
It has also recently been uncovered, that many trademark applications were actually not filed. Some corrupt agents, instead of paying the official filing fees, bribed officials in the Trade Mark Office to receive fake 'Acknowledgement Forms' and Acceptance Letters, Certificates of Registration, etc. Applicants are strongly advised to keep copies of all official documents, including the receipts for the payment of the official payments.
National:
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 2 months from the date the application was published in the trademarks journal, and shall include the grounds of opposition. Service of the notice of opposition must be done through the office of the Registrar and on receipt of the notice of opposition, the Registrar is mandated to serve a copy on the applicant, who has 1 month from the date of service to file a response in the form of a counterstatement. Failure to file a counterstatement within the prescribed period of one month will result in the application being deemed abandoned. Where the applicant will be unable to file the counterstatement within the one month period, the applicant may, before the expiration of the said period of 1 month, apply to the Registrar for extension of time within which to file the counterstatement. The grant of the application for extension of time is at the discretion of the registry.
Thereafter, the opponent shall file the evidence in support of his opposition by way of a statutory declaration within one month, and if he does not, he shall be deemed to have abandoned his opposition. Upon receipt of the opponent’s statutory declaration, the applicant is also given the opportunity to file his own statutory declaration, adducing evidence upon which he relies for his defence within one month. Thereafter, the opponent may also file further evidence and reply by way of a further statutory declaration within one month.
After that, no further evidence shall be left on either side and the Registrar shall subsequently give notice of hearing and the matter shall be decided on merit.
A trademark registration is valid for an initial period of 7 years from the date of application. The trademark registration can thereafter be renewed indefinitely for subsequent periods of 14 years each. An application for renewal should be made not less than 3 months from the due date.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is NGN 15,000 (manual) and NGN 16,800 (online). The official fee for issuance of the certificate is NGN 10,000 (manual) and NGN 11,800 (online).
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Practical details on trademark licensing are available in our publication
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General Trademark Regulations
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Jul 11, 2023
Lexx & Sophy, Lagos, Nigeria