WHAT IS A TRADEMARK?
Trademark as defined under the Trademarks Act, means a mark used or proposed to be used in relation to goods, for the purpose of indicating a connection in the course of trade between the goods and some persons having the right either as a proprietor or as a registered user to use the mark.
There are 4 major uses of a Trademark:
- To identify the company or organization using it as the manufacturer.
- To distinguish a product from other competing products in the market.
- To advertise the product to new and existing consumers.
- To convey information about the quality and characteristics of products bearing them.
HOW TO REGISTER A TRADEMARK IN NIGERIA
The Trademarks Act provides that any person claiming to be the proprietor of a trademark used or proposed to be used by him who is desirous of registering it must apply in writing to the Registrar of Trademarks in the prescribed manner as directed by the Minister for Industry, Trade and Investment.
Step 1: Design the trademark
The following marks will not be accepted for registration by the Registry:
1. Marks similar to an existing registered trademark
2. Generic terms
3. Deceptive or scandalous marks
4. Names of chemical substances for a chemical product.
5. Government or official signs or titles without the authorization of the appropriate authority.eg. Use of the National emblem, coat of arms, etc.
6. Well-known trademarks- these are marks even though not registered are protected because they are well-known by members of the public and a third party cannot claim that he/she is unaware of the existence of such a mark.
Step 2: Identify the Trademark Class
Trademark has two major classes which are each subdivided into other classes:
- Product (Goods) Classes-There are 34 subclasses under this class.
- Service Classes-There are 11 subclasses under this class.
To know more about the classes and subclasses, please click the link below:
Step 3: Apply to the Registrar of Trademarks for registration of the trademark
1.Availability Search and Application
Brief an intellectual property lawyer with the trademark or the description of a symbol or logo or design to be registered. The Agent or lawyer will conduct the search on the trademark, and if it is not in conflict or too similar with any existing trademark, an application for the registration can proceed. The Registrar of Trademarks will issue an acknowledgement notice to the applicant at this stage acknowledging his/her request to register the trademark, upon receipt of a complete application. At this stage, the applicant can have confidence, but not an assurance, in the success of the entire registration process.
2. Acceptance
Whereupon an application has been approved after a successful search has been conducted, the Registry will accept, register the trademark, and issue an Acceptance Letter to the applicant. The Acceptance Letter is initial evidence that the trademark application has been approved for registration.
3. Publication and Certification
The third stage involves publication in the trademark journal and certification. This is the final stage.
ENFORCEMENT OF TRADEMARKS AND OTHER INTELLECTUAL PROPERTY RIGHTS IN NIGERIA
All matters bordering on Intellectual Property ownership or infringement (one of which is Trademarks) are commenced at the Federal High Court and no other court in Nigeria is permitted by law to entertain such matters.
A trademark is infringed where a person, other than the proprietor or registered user of the trademark, who is not permitted to use the mark, uses a mark identical to the registered trademark or so nearly resembling it as to be likely to deceive or cause confusion, during trade.
The proprietor of a trademark can bring an action to prevent the registration of a mark similar to or resembling his own registered mark by another person. He can also institute an action if the mark which infringes his own mark has already been registered. Indeed, where the two marks resemble or nearly resemble each other as to be likely to deceive or cause confusion, the proprietor of a trademark is likely to succeed in an action for infringement.
Civil remedies for intellectual property rights infringement include the following;
- Award for Damages – Damages refer to a primary remedy for infringement and it is a pecuniary monetary satisfaction awarded by the court to the plaintiff for his financial loss occasioned by the infringement of his rights
- Injunctions – to stop the infringer from further use of the trademark.
It must be noted that where the infringement occurs under a business arrangement governed by an agreement between the Trademark owner and the infringer, Issues such as ownership of intellectual property and dispute resolution processes are addressed under such agreements. The Legal Team includes strong Intellectual Property clauses in all agreements it is involved in.
ENFORCEMENT OF TRADEMARKS AND OTHER INTELLECTUAL PROPERTY RIGHTS INTERNATIONALLY
Globalization and the virtual disappearance of national borders in the world of business and commerce has created a global market for products. Unfortunately, globalization has not blurred the Territorial effect of Intellectual Property registration.[10]
In effect, Intellectual Property protection offered by nations has a municipal effect i.e., valid only within that nation’s territory. This means that for a foreign Intellectual Property Right to be accorded protection outside Nigeria; separate protection must be obtained in that jurisdiction, in accordance with the trademark laws of that jurisdiction.
Despite the use of terms like “International Intellectual Property Rights”; registration or grant of Intellectual Property right, its protection, and its enforcement always remain with individual nations. The so called “International Intellectual Property Rights” merely refers to agreements between nations to subscribe to a uniform set of requirements that would lead to those several nations considering an application to grant protection, but actual grant would still be considered and given by the nation or in some cases; bloc of nations subject to their own standards.[11]
Secondly, we must note also that this International Systems are not automatically applicable to every country. Only countries that have signed up to the Treaty governing a system are covered. Such Treaties include;
- Berne Convention (1886)
- WIPO Copyright Treaty (WCT)
- Paris Convention
