IP protection is, without doubt, the cornerstone of exclusivity in the global creative industry. There are 4 types of IP namely Trademark, Copyright, Patent, and Trade secrets. In this article, we will be answering some FAQs on Trademark in Nigeria as compiled by Perchstone & Graeys, one of the Resource partners on our Membership Network and one of the leading commercial law firms in Nigeria.
What is a Trademark?
A Trademark is a sign, design, word, phrase, or expression which identifies and distinguishes the products or services of a particular source from those of others.
What is the effect of the non-registration of a Trademark?
A person who has not registered his Trademark shall not be entitled to institute a proceeding in a court of law to prevent or to recover damages for the infringement of an unregistered Trademark. However, the owner may institute a tortious action for passing off (Section 3, Trademark Act.)
To put it simply, the law cannot fully protect what it doesn’t recognize to be yours.
When is a Trademark right said to be infringed?
A Trademark is infringed where a person other than the registered owner or licensee of the Trademark makes use of a mark identical with it or nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in which it is registered. (Section 5(2), Trademark Act)
What information is required to register a Trademark?
The following details are required for the registration of a Trademark:
The name of the company, individual, or firm, represented in a special or particular manner;
- The signature of the applicant for registration or some predecessor in his business;
- An invented word or invented words;
- Any other distinctive mark.
(Section 9, Trademark Act)
When is a Trademark non-registrable?
- Deceptive, scandalous matter likely to cause confusion shall not be registrable as Trademark.
- Names of chemical substances.
- Identical and resembling Trademark.
(Section 11 and 12, Trademark Act)
How is a Trademark registered?
A proprietor of a Trademark must apply to the Registrar of Trademark stating the Name, Nationality, and Address of the Applicant as well as the name of the Trademark and the Class in which it is to be registered.
What is the duration of a Trademark?
The registration of a Trademark shall last for seven years subject to periodic renewals.
(Section 23, Trademark Act)
Can a Trademark be assigned?
A registered Trademark can be assigned to another party in respect of all or some of the goods in which it was registered and in connection with the goodwill of a business. (Section 26, Trademark Act)
When can a Trademark be revoked?
- Use and Non-use: Where the owner of a Trademark registered it without bonafide intention to use it for the goods in respect of which it was registered.
- Non-renewal of a Trademark
- Fraudulent registration of the Trademark.
- The Trademark is not distinctive.
(Section 31, Trademark Act)
Can a website or domain name be registered as a Trademark?
Yes – it is possible to register domain names as a Trademark, provided that the domain names satisfy all conditions for it to be registered like the Trademark and service marks. To qualify for registration as a Trademark, the domain name must be distinct from other domain names and well-known Trademarks so that it does not mislead or deceive customers.
Can Trademark registration be used in other countries?
Trademark registrations are largely territorial. Although there is the Madrid Protocol, which is an international treaty that allows a Trademark owner to register a Trademark in any of its member countries by filing a single Trademark application, called an “international application.” However, this does not guarantee that a particular country will agree to register your Trademark. Every country has its own laws and standards regarding what types of Trademarks can be registered.
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Now that you’ve read to this point, hope you found this helpful? Stay tuned for the 2nd part of our IP series!
Do you have any additional questions or would you like to register your trademark? You can get this done at a special discount at Perchstone & Graeys. This discount only applies to Members of The Assembly Hub’s Membership Network.
You could also gain access to more discounted services from our many Membership Partners (Accounting, Production, Design, etc), free events & masterclasses, our mentoring sessions, and much more.