The idea behind the concept of Trademark is for the protection of the ideas, inventions, designs and trade secrets of Investors and by so doing, ensure that their rights are not infringed upon by Competitors.
Once a Trademark is registered, it enables the owner to take legal actions against anyone who exploits benefits associated with the use of the registered mark without the consent or the authorisation of the owner of the mark.
Upon completion of the registration process, the Owner of the mark assumes exclusive ownership to the exclusion of all others and his right will be deemed to have been infringed upon by any other person or corporate entity who makes use of the mark or any other mark which is identical to the mark or is likely to deceive or confuse the public in the course of trade relation to any goods in respect of which the mark was registered.
The description of a registrable “MARK” given by the Trademarks Act, CAP T13, Laws of the Federation of Nigeria 2004 (“TMA”) and Trademark Regulations 1990 being the substantive law governing Trademark in Nigeria states that a Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.
For a Mark to be considered registrable by the Ministry, the following obligation and conditions must be contained therein:
- The name of a company, individual, or firm must be represented in a unique way
- the signature of the applicant for registration or some predecessor in his business;
- an invented word or invented words;
- a word or words having no direct reference to the character or quality of the goods e.g. OMO which is a unique mark for a brand of detergent, and not being according to its ordinary signification a geographical name or surname any other distinctive mark;
In the event of failure by an applicant to include the above listed requirements will inadvertently lead to refusal of the trademark application.
Other indispensable obligation that is the basis of disqualification includes
- That the mark is deceptive or scandalous, contrary to law or morality.
- that the mark contains a word which is commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture in respect of a chemical substance or preparation
- that the mark contains some prohibited words and/symbols such as the names of chemical substances, Coat of Arms, the words “patent”, “patented”, “registered”, “registered design”, “copyright”, or words to the like effect, and so on.
The above mentioned grounds for objection to the registration of a Mark can be surmounted by making an oral or written application to the Registrar for waiver or the presenter of the Mark may do the needful and make the necessary adjustments to merit an approval and acceptance.
In Nigeria, the notion of Trademark is superintended by the Trademarks, Patents and Designs Registry, Commercial Law Department of the Ministry of Industry, Trade and Investment.
An Application is made to the Registrar of Trademarks through his office stated above and will be submitted to the Head office of the Ministry at Block D, Old secretariat , Area 1, Garki, Abuja or visit: (http://www.iponigeria.com/#/Contact ).
REQUIREMENTS
The following are indispensable for the processing of a trademark application in Nigeria:
- Specific details of the applicant/owner which includes the Name, Contact and Nationality.
- A softcopy of the Design, device, logo, word(s) and prototype in a jpeg format (i.e. 120px x100px, 1200dpi) of goods and services for which the trademark is to be registered.
- A printed copy or any form of representation of the projected trademark
- Power of Attorney signed by the applicant authorising the agent to act on his behalf. In the case of a corporate entity, the authorisation has to be executed by the Directors or Company secretary and any person authorised by the officers of the company. The document is not expected to be notarised.
- Company seal or individual signature of the applicant
PROCESS AND PROCEDURE (A STEP BY STEP GUIDE)
They are basically FOUR steps which an applicant must follow in order to complete the process of trademark registration in Nigeria.
STEP 1: AVAILABILITY OF MARK SEARCH.
Any business owner(s) who desires to have any of his trade devices or logo trademarked for efficient commercial prosperity must endeavour to engage the services of an agent (most especially a corporate lawyer) due to some legal technicalities involved in the trademark registration process.
A search has to be conducted on the mark within a specific class (es) of trademark.
There are 45 classes and an applicant must study the classes so that the search will be conducted within the appropriate class or those closely aligned to it.
It is important to state that a mark may be registered in more than one class, but the applicant has to make a separate filing fee for each of the classes.
This stage is optional due to the fact that an application can be made without the hassle of a Prior search.
STEP 2: TRADEMARK APPLICATION FILING
This is the stage the dexterity and proficiency of the local attorney (Corporate Lawyer) will come to the fore.
Upon receiving the instruction of the trademark applicant to proceed with the trademark application, the applicant will be required to execute a Power of attorney for the purpose of authorising the Corporate Lawyer to file the application on his/her behalf so as to deal with any matter connected to the trademark(s) at the trademarks registry as well as to receive all document on their behalf.
Upon a successful online or offline application, the TM registry portal generates an OFFICIAL ACKNOWLEDGEMENT LETTER which bears the application number and Filing date.
The duty to conduct a preliminary search to determine if the mark is distinct or dissimilar from prior filed and registered marks within the Class (es) the application is made is the Trademark Registry.
This further search is the reason why the First stage Availability of Mark Search is optional.
Once the Mark is considered to be registrable, the Registrar will issue an ACCEPTANCE LETTER.
The legal implication of issuing an Acceptance letter by the Registrar is to avail the mark protection against identical or similar mark applications that will be made later within the same Class.
STEP 3: PUBLICATION IN TRADEMARK JOURNAL
Publication of a trademark application in the Trademark journal is an event that must occur prior to the issuance of a Trademark certificate.
Once the application is published in the journal, a statutory period of two months must elapse from the date of the publication within which opposition to the mark can be filed against the registration of the trademark and it is non-extendible, though infrastructural problems and budgetary deficits faced by the Trademark registry has made publication within the statutory two months a mirage.
The decision to an opposition application against a mark must be made by the Registrar after hearing the evidence adduced by both parties.
An appeal to the decision of the registrar lies to the Federal High Court.
STEP 4: CERTIFICATION
After the Publication barrier is successfully tackled by a trademark applicant, as a result of no opposition to the application as published or that an opposition was resolved in favour of the applicant, a formal application will to be made to the Registrar by the attorney for the issuance of a Trademark Certificate of Registration. The Certificate will serve as a prima facie evidence of registration and for authenticity; it must bear the Registered Trademark No. and the date of filing.
A Trademark Certificate operates retrogressively in that its takes effect from the filing date as against the date the Certificate of registration was issued. The Validity period of a trademark certificate is 7years and is renewable indefinitely for a fourteen (14) years
CLASSES OF TRADEMARKS IN NIGERIA.
They are 45 different classes of Trademark in Nigeria which is in accordance with the Nice International System of Classification of the Nice Agreement 1957 (amended September, 28 1979).
Studying and Understanding the Classes is key to ensuring that an application for Trademark is not declined due to failure to properly place an application on the appropriate designated Class.
Below are the list of Trademark Classes is Nigeria
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; unprocessed plastics in the form of liquids, chips or granules.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; combustible fuels, electricity and scented candles.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; unwrought and partly wrought common metals; metallic windows and doors; metallic framed conservatories.
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
Class 8: Hand tools and hand operated implements; cutlery; side arms; razors; electric razors and hair cutters.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; sex aids; massage apparatus; supportive bandages; furniture adapted for medical use.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights and vehicle air conditioning units.
Class 12: Vehicles; apparatus for locomotion by land, air or water; wheelchairs; motors and engines for land vehicles; vehicle body parts and transmissions.
Class 13: Firearms; ammunition and projectiles, explosives; fireworks.
Class 14: Precious metals and their alloys; jewellery, costume jewellery, precious stones; horological and chronometric instruments, clocks and watches.
Class 15: Musical instruments; stands and cases adapted for musical instruments.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; semi-finished plastics materials for use in further manufacture; stopping and insulating materials; flexible non-metallic pipes.
Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals.
Class 19: Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; non-metallic monuments; non-metallic framed conservatories, doors and windows.
Class 20: Furniture, mirrors, picture frames; articles made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or plastic which are not included in other classes; garden furniture; pillows and cushions.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steel wool; articles made of ceramics, glass, porcelain or earthenware which are not included in other classes; electric and non-electric toothbrushes.
Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks for transporting bulk materials; padding and stuffing materials which are not made of rubber or plastics; raw fibrous textile materials.
Class 23: Yarns and threads, for textile use.
Class 24: Textiles and textile goods; bed and table covers; travellers’ rugs, textiles for making articles of clothing; duvets; covers for pillows, cushions or duvets.
Class 25: Clothing, footwear, headgear.
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); wallpaper.
Class 28: Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; childrens’ toy bicycles.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared meals; soups and potato crisps.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches; prepared meals; pizzas, pies and pasta dishes.
Class 31: Agricultural, horticultural and forestry products; live animals; fresh fruits and vegetables, seeds, natural plants and flowers; foodstuffs for animals; malt; food and beverages for animals.
Class 32: Beers; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; shandy, de-alcoholised drinks, non-alcoholic beers and wines.
Class 33: Alcoholic wines; spirits and liqueurs; alcopops; alcoholic cocktails.
Class 34: Tobacco; smokers’ articles; matches; lighters for smokers.
Services:
Class 35: Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of goods.
Class 36: Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information.
Class 37: Building construction; repair; installation services; installation, maintenance and repair of computer hardware; painting and decorating; cleaning services.
Class 38: Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; radio and television broadcasting.
Class 39: Transport; packaging and storage of goods; travel arrangement; distribution of electricity; travel information; provision of car parking facilities.
Class 40: Treatment of materials; development, duplicating and printing of photographs; generation of electricity.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, drawing and commissioned writing for the compilation of websites; creating, maintaining and hosting the websites of others; design services.
Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; retirement home services; creche services.
Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; dentistry services; medical analysis for the diagnosis and treatment of persons; pharmacy advice; garden design services.
Class 45: Legal services; conveyancing services; security services for the protection of property and individuals; social work services; consultancy services relating to health and safety; consultancy services relating to personal appearance; provision of personal tarot readings; dating services; funeral services and undertaking services; fire-fighting services; detective agency services.
Okpi, Ibe Chinedu is the Principal partner in the Law Firm of ICA- Ibe, Chido & Associates (www.ica.ng ) with an extensive knowledge in Corporate and Commercial Law Practice. He can be contacted via phone: 08180524686 or email: info@ica.ng
