THE TRADE MARK REGIMES ON REMOVAL OF MARKS FOR NON-USE.
A trade mark (also written as trademark) is any mark used or proposed to be used in relation to
goods and services[1] for
the purpose of indicating or so as to indicate a connection in the course of
trade between the goods and services and some person having the right either as
a proprietor or registered user of the mark, whether with or without the
identity of that person[2].
In determining which
mark is registrable and which is not, laws of various countries make provisions
for the categorization of trademarks. In Nigeria, the Act provides two registers for marks which are either
inherently adapted to distinguish,[3]
kept in part A of the Register and marks which are capable of distinguishing[4],
kept in part B of the Register, the Act renders non-registrable, deceptive and
scandalous matter[5], a
geographical name or surname[6],
identical and resembling trade marks[7]
and names of chemical substance.[8]
Once a mark has passed the hurdles of registrability, has
survived opposition and has been registered either A or B of the register, it
can then be used in relation to the goods or services for which it was registered
only for the class of goods covering that class under which it was registered.
This is the position under the Trade Marks Act.
Removal For Non-Use
Of Marks: The Nigerian Position
Notwithstanding that a mark has been registered on the Register,
it may still be removed therefrom on the ground of non-use. The Act provides
that, subject to the provision on defensive registration of well-known marks, a
registered mark may be removed from the Register in respect of any goods in
respect of which it is registered, if any person makes an application in that
regard to the court or to the Registrar[9].
The grounds upon which the application for the removal of a mark may be made
under the Act are:
1.
that
the trade mark was registered without any bona
fide intention on the part of the applicant for registration that it should
be used in relation to those goods by him, and that there has in fact been no bona fide use of the mark in relation to
those goods by any proprietor thereof for the time being up to the date one
month before the date of the application, or
2.
that
up to the date one month before the date of the application, a continuous
period of five years or longer elapsed
during which the trade mark was a registered trade mark and during which there
was no bona fide use thereof in
relation to those goods by any proprietor thereof for the time being.
Therefore, the two scenarios in which a successful
application for the removal of trademark on the ground of non-use can be made are:
where there was no bona fide
intention ab initio to use the mark
in relation to any goods or services and it has in fact not been used in
relation to any goods or services for a period of one month before the
application for removal, and where
there may have been an initial bona fide
intention to use the mark in relation to goods or services, a continuous period
of five years and one month has elapsed during which the mark has not been used
in relation to any goods or services for which it was registered.
From the foregoing, two important issues are worthy of
attention. First, unlike in many other jurisdictions, proof of prior use is not
required for the registration of trade mark in Nigeria. A mark may only be
removed if after registration, there is no evidence of either a bona fide intention to use the mark for
a period of one month, or an actual use of the mark for a period of five years and
one month after registration. The second is that, unlike in some other
jurisdictions where an applicant is required to prove use or prior use, under
the Trade Marks Act, it is actually the person who seeks that a mark be removed
from a Register that must prove either lack of either bona fide intention to use or actual use within the stipulated
period.
THE POSITION IN OTHER
JURISDICTIONS
USA
Unlike the Nigerian Trade Mark Act, the United States
trademark regime requires clear evidence of use in commerce before a mark can
be accepted for registration. The Register in the United States is a use-based
Register. The use in commerce requirement must, according to the USPTO, ‘’be a bona fide use of the mark in the
ordinary course of trade and not use simply made to reserve rights in the
mark’’[10]
For goods, the applicant must show that the marks appear on
the goods, the container for the goods or the display associated with the goods.
Also the goods must be sold or transported in commerce.[11]For
services, the applicant must show that the mark is used or displayed in the
sales or advertising of the services. Also, the services must be rendered in
commerce.
Examples of proof of use are found on the USPTO website and
they range from photographs that show the mark on a tag to labels affixed to
the goods and photographs of the marks on service vehicles.
The rationale for proof of prior use in commerce in the United
States is to ensure that such applications do not unnecessarily block further
applications and diminish the utility of the Trademark Register to provide
notice of trademark rights to the public. Certainly, considering the number of
applications received, it seems that the only proper measure to curb the registration
of scandalous, pre-emptive and unused marks is to insist on prior use in
commerce. The proof of prior use in commerce rests on the applicant and not on
the person challenging its registration as is the case with Nigeria.
UNITED KINGDOM
Just like Nigeria, trademarks can be removed from the Register
on the ground of non-use. This is referred to as revocation for reasons of
non-use. . Also, prior use is not a condition for registration of marks in the
United Kingdom.
Under the UK Trademarks Act of 1994, any person may commence
a proceedings to remove a registered trademark because the mark has not been
used for a period of five years since the trade mark was registered, or for any
uninterrupted period of five years and there are no proper reasons for the non-use.
The applicant may apply to remove either the entire registration or just the
registration of the mark for some of the goods and services. The application
for revocation may be made at the day, following the fifth year of the date of
registration or the date from when the registered mark has not been in use.[12]
This application is made at the Intellectual Property Office.
GERMANY
Under section 49 of the German Trademark Act[13],
the registration of a trademark shall be cancelled among other grounds, on
request because of revocation if the trademark has not been used after the date
of registration in accordance with Section 26[14]
within an uninterrupted period of five years. In determining whether a mark is
in use or where the upholding of the registration of a mark depends on it having
been used, the Act stipulates that such mark “must have been seriously used in
Germany by its proprietor for the goods or services in respect of which it is
registered unless there are legitimate grounds for non-use.”[15]
Use in Germany is however expanded to include use of the mark with the consent
of the proprietor and use of the mark in a form different from the
registration. Also use of the mark on goods exclusively intended for export is
a good use under the Act and no action for revocation can succeed against such
mark.
CHINA
Article 44 of the Trademark Law of the People’s Republic of China
[16]
provides that a person who has ceased to use a registered trademark for three
consecutive years may have the mark cancelled by the Trademark Office.[17]
The Trademark Office may however order the proprietor to rectify the situation.
The Chinese Trademark Act is silent on whether a third party can bring an
application for the cancellation and the procedure for doing so, leaving the
procedure in the hands of the trademark office.
CONCLUSION
In all the jurisdictions reviewed, it would seem that many lean
towards cancellation or revocation on grounds of non-use and do not require
evidence of prior use before registration.
However, only Nigeria Law contains an interesting provision
which allows a person to apply for the removal of another’s mark on the ground
that such mark was registered without any bona fide intention to use same. This
application for removal can be brought after a period of one month.
It is not certain how absence of bona fide intention is to be proved by the applicant under the
Nigeria’s Trade Mark Act. There is no record of any matter whereat a mark has
been successfully removed under this provision of the Act.
Therefore, any person who desires to use a mark which is
registered has a duty to enquire and provide credible evidence that the mark
has not been in use for a period of at least five years and one month. This is
a safer route to removing a mark from the register under the Act.
[1] Services do not form part of
goods recognized by the Nigeria trade mark Act. However, the trademark registry
has been accepting services marks for registration. This is in pursuance of the
trademarks Regulations 2007 by the minister of commerce & industries
[2] S. 67(1) Trademark Act Cap T13
Laws of the Federation of Nigeria 2004
[3][3][3]
S. 9
ibid. For a mark to be inherent adapted to distinguish and thus registrable in
part A of the register, it must consist of at least one of the following:
i.
The name of the company, individual, form represented
in a special or particular manner
ii.
The signature of the applicant or predecessor in
business
iii.
Invented word (s)
iv.
Words having no direct reference to the character of
the goods (fanciful words)
v.
Any other distinctive mark
[4] S.10 ibid: marks are
registerable in part B of the register if they are capable either inherently or
by reason of use, capable of the product from those or others.
[5] s.11 ibid
[6] s. 9(1)(d) ibid
[7] s.13 ibid
[8] S.12 ibid
[9] S.
31(1) ibid
[10]
Post “Registration Proof of Use
Audit Program” Trademarks; Maintaining a Trademark Registration. https://www.uspto.gov/trademarks-maintaining-trademark-registrations-post-registration-audit-program
[11]
ibid
[13]
An act for the protection of trademarks and other signs of 25 October
1994(federal law gazette [BGBI] ) part lp.3082;as fast amended by art . 11 of
the Act 17 July 2017, federal law gazette(Bundesgesetzblatt) part lp.2541
[14]
S.26 ibid- states the uses that are
[15]
S.26(1) ibid
[16]
The trademark law of the people republic of china was adopted at the 24th
session of the standing committee of the fifth national people’s congress on 23
August 1982, revised for the first time according to the decision on the
amendment of the trademarks law of the people republic of china adopted at the
30th session of the standing committee of the 7th
National people’s congress on 22 February 1993, and revised for the second time
according to the decision on the amendment of the trademark law of the people’s
Republic of china adopted at the 24th session of the standing
committee of the ninth National people’s congress on 27 October2007.
[17]
S.44(4) ibid
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