After I posted the first IP related material on this blog, I got a lot of response. People asked who/what is Nice. People didn't know there are different classes in trademark registration. Many people do not even know what trademark is all about. Taking the esteemed blog viewers to high level as Nice Classification at our first post has opened our eyes to the need to bring the topics home.
I have attempted to answer ten of the frequently asked questions. There may be other questions which are not answered here. If yours is not answered, please send us a message at info@sapphire-legal.com or visit www.sapphire-legal.com. I shall be glad to answer them.
1. What really is trademark?
Trademark is defined under Nigerian Trade Mark Act as “a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in course of trade between the goods and some person having the right either as a proprietor or a registered user to use the mark whether with or without any indication of the identity of that person”
Trademark is any mark that a person or company uses to distinguish his/its products and services from the products and services of another.
Note that while the Nigerian Trade Mark Act defines Trademark only in relation to goods (thus, excluding services) the Trademark, Patents & Designs Registry (The Registry), Commercial Law Department of the Ministry of Industry, Trade and Investment – the body charged with the registration of trademark- adopts the Nice Classification, which relates trademarks to goods and services.
2. Is trademark applicable to only people selling tangible goods?
No. Trademark is applicable to both goods and services. While all kinds of goods are registrable under classes 1 to 34 of the Nice classification, services like advertising (cl 35), insurance, financial, monetary and real estate affairs (cl 36), telecommunications (cl 38, education (cl 41), industrial analysis and research services (cl 42), hotel and temporary accommodation services (cl 43), medical services (cl 44) and legal services (cl 45) are registrable as trademarks in Nigeria. They are also referred to a service marks.
3.Which body or authority is in charge of registration of trademark?
Trade Mark, patents and Designs Registry, Commercial law Department, Federal Ministry of Industry, Trade and Investment is the body that is responsible for the registration and protection of trademarks as well as patents and designs in Nigeria. The Registry has its office at Block D, Old Secretariat, Area 1, Gariki, Abuja, Nigeria.
4. How do I register my trademark?
It is strongly recommended that you seek the services of an accredited Trademark attorney for the registration of your mark. The use of touts or unaccredited persons is discouraged.
For the lis of accredited trademark attorneys in Nigeria, please visit the registry’s website www.iponigeria.com .
The advantages of using an accredited attorney for your trademark registration are many; one of which is that you are properly advised on the preliminary issues regarding the registrability of your mark as well as the consequences of any opposition or infringement of your mark.
5. Must I design a logo before I can register my trademark?
Both words and logos are registrable as trademark. You may register word only, word and logo or logo only.
By the definition of in the Trade Marks Act, marks “include device brands, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”
6. I have a word or logo I want to register but I do not have any goods or services I am selling at the moment. Can I register the logo and keep it for the future?
Trademarks are registered in relation to goods and services. Where a mark is registered without any bona fide intention on the part of the proprietor to use the mark in relation to goods or services and in fact such mark has not been used on any goods or services for at least one month before the application, any person may apply to the Registrar for the mark to be taken off the register.
Also, where a mark has been registered and a period of at least five years and one month has passed without the mark being used on any goods or service(even if it had been previously used), then it may be taken off the register.
However, the Act permits a defensive registration of a well-known mark. That is a mark has become so popular in relation o a particular class of goods or services. Such a ,ark may remain in the register even if they are not being used in relation to other particular class of goods or services.
7. How much does it cost to register a trademark?
The fees charged by attorneys for the registration of trademark depend on whether such mark is local or foreign mark. Attorneys will usually charge a lesser fee(usually in Naira) for local trademark registration. Most accredited trademark attorneys have their schedule of fees which are usually available on their websites.
A local trademark will cost between N70,000.00 and N100,000.00 per class while a foreign mark will cost between $350.00 and $750.00 to be registered. These fees include the official fees and the attorney’s fees. For other trademark services, please check the fees schedule of your attorney.
8. I registered a name with the Corporate Affairs Commission, do I automatically have trademark to that name?
Registration of a name at the Corporate Affairs Commission (CAC) does not mean an automatic ownership of the trademark in the name. CAC is only authorised to register business names, Companies and Incorporated Trustees and not trademark. It is the Trademark, Patents and Designs Registry that is authorised to register trademarks. Therefore, you must still register the mark with the Registry before you can claim ownership of the mark and consequently prevent other people from using it.
9. Someone is using a similar name/logo for his business. Can I still be allowed to register mine?
If a mark is used by a person in a particular class, you may be allowed to register it in another class. For example, if Mark X is registered under class 5 (Pharmaceutical, medical and vetinary preparations), you may still be allowed to register same or similar mark in another class, say class 25 (Clothing, footwear, headgear) except the owner under class 5 has done a defensive registration.
10. My mark has been used without my consent. What should I do?
You are entitled to institute a civil action at the Federal High Court to stop the usage of your registered trademark and/or to recover damages. If your mark is not registered, you can only seek reliefs under common law principle of passing off.
You are advised to seek the services of a firm of attorneys with strong IP litigation department to assist you in this regard.
Conclusion
As Intellectual property law awareness continues to grow in Nigeria, mark owners are advised to seek legal help in the protection of their mark and in ensuring against infringement.
The cost of registration is almost nothing when compared with the benefits of securing your brands through an accredited trademark attorney.
I have attempted to answer ten of the frequently asked questions. There may be other questions which are not answered here. If yours is not answered, please send us a message at info@sapphire-legal.com or visit www.sapphire-legal.com. I shall be glad to answer them.
1. What really is trademark?
Trademark is defined under Nigerian Trade Mark Act as “a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in course of trade between the goods and some person having the right either as a proprietor or a registered user to use the mark whether with or without any indication of the identity of that person”
Trademark is any mark that a person or company uses to distinguish his/its products and services from the products and services of another.
Note that while the Nigerian Trade Mark Act defines Trademark only in relation to goods (thus, excluding services) the Trademark, Patents & Designs Registry (The Registry), Commercial Law Department of the Ministry of Industry, Trade and Investment – the body charged with the registration of trademark- adopts the Nice Classification, which relates trademarks to goods and services.
2. Is trademark applicable to only people selling tangible goods?
No. Trademark is applicable to both goods and services. While all kinds of goods are registrable under classes 1 to 34 of the Nice classification, services like advertising (cl 35), insurance, financial, monetary and real estate affairs (cl 36), telecommunications (cl 38, education (cl 41), industrial analysis and research services (cl 42), hotel and temporary accommodation services (cl 43), medical services (cl 44) and legal services (cl 45) are registrable as trademarks in Nigeria. They are also referred to a service marks.
3.Which body or authority is in charge of registration of trademark?
Trade Mark, patents and Designs Registry, Commercial law Department, Federal Ministry of Industry, Trade and Investment is the body that is responsible for the registration and protection of trademarks as well as patents and designs in Nigeria. The Registry has its office at Block D, Old Secretariat, Area 1, Gariki, Abuja, Nigeria.
4. How do I register my trademark?
It is strongly recommended that you seek the services of an accredited Trademark attorney for the registration of your mark. The use of touts or unaccredited persons is discouraged.
For the lis of accredited trademark attorneys in Nigeria, please visit the registry’s website www.iponigeria.com .
The advantages of using an accredited attorney for your trademark registration are many; one of which is that you are properly advised on the preliminary issues regarding the registrability of your mark as well as the consequences of any opposition or infringement of your mark.
5. Must I design a logo before I can register my trademark?
Both words and logos are registrable as trademark. You may register word only, word and logo or logo only.
By the definition of in the Trade Marks Act, marks “include device brands, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”
6. I have a word or logo I want to register but I do not have any goods or services I am selling at the moment. Can I register the logo and keep it for the future?
Trademarks are registered in relation to goods and services. Where a mark is registered without any bona fide intention on the part of the proprietor to use the mark in relation to goods or services and in fact such mark has not been used on any goods or services for at least one month before the application, any person may apply to the Registrar for the mark to be taken off the register.
Also, where a mark has been registered and a period of at least five years and one month has passed without the mark being used on any goods or service(even if it had been previously used), then it may be taken off the register.
However, the Act permits a defensive registration of a well-known mark. That is a mark has become so popular in relation o a particular class of goods or services. Such a ,ark may remain in the register even if they are not being used in relation to other particular class of goods or services.
7. How much does it cost to register a trademark?
The fees charged by attorneys for the registration of trademark depend on whether such mark is local or foreign mark. Attorneys will usually charge a lesser fee(usually in Naira) for local trademark registration. Most accredited trademark attorneys have their schedule of fees which are usually available on their websites.
A local trademark will cost between N70,000.00 and N100,000.00 per class while a foreign mark will cost between $350.00 and $750.00 to be registered. These fees include the official fees and the attorney’s fees. For other trademark services, please check the fees schedule of your attorney.
8. I registered a name with the Corporate Affairs Commission, do I automatically have trademark to that name?
Registration of a name at the Corporate Affairs Commission (CAC) does not mean an automatic ownership of the trademark in the name. CAC is only authorised to register business names, Companies and Incorporated Trustees and not trademark. It is the Trademark, Patents and Designs Registry that is authorised to register trademarks. Therefore, you must still register the mark with the Registry before you can claim ownership of the mark and consequently prevent other people from using it.
9. Someone is using a similar name/logo for his business. Can I still be allowed to register mine?
If a mark is used by a person in a particular class, you may be allowed to register it in another class. For example, if Mark X is registered under class 5 (Pharmaceutical, medical and vetinary preparations), you may still be allowed to register same or similar mark in another class, say class 25 (Clothing, footwear, headgear) except the owner under class 5 has done a defensive registration.
10. My mark has been used without my consent. What should I do?
You are entitled to institute a civil action at the Federal High Court to stop the usage of your registered trademark and/or to recover damages. If your mark is not registered, you can only seek reliefs under common law principle of passing off.
You are advised to seek the services of a firm of attorneys with strong IP litigation department to assist you in this regard.
Conclusion
As Intellectual property law awareness continues to grow in Nigeria, mark owners are advised to seek legal help in the protection of their mark and in ensuring against infringement.
The cost of registration is almost nothing when compared with the benefits of securing your brands through an accredited trademark attorney.
Comments
Post a Comment