Trademark is a sign or any combination of signs that distinguish goods and/or services offered by a company from a similar company. A trademark is generally interchanged to include a service mark. In Nigeria, a trademark can include word mark, texture mark, hologram mark, colour and figurative elements. A certification mark is also recognized as a trademark[1]. However, it can only be issued by a certifying authority rather than an individual in a similar business licensing such.
Precious Odega
Regulatory Framework for Trademark in Nigeria
The Trademark Act of 1967 (hereinafter referred to as TMA), Merchandise Marks Act of 2004 and Nigerian Trademark Regulation are the legal frameworks for trademark in Nigeria. While the regulating body for trademark is the Trade Marks Registry, under the Commercial Law Department of the Federal Ministry of Trade, Investments and Industry.
Protection of a Trademark
Section 3 of the Trade Marks Act provides that for a trademark to be protected, it must be registered. However, protection can still be given to an unregistered trademark if it is well-known. A well-known mark is a trademark that is easily recognizable by consumers to identify a company’s good or service. Generally, protection of a trademark is territorial. Meaning, a mark is only protected in countries where it is registered. For a trademark to be registerable, it must be distinctive and non-deceptive. The TMA further prohibits the registration of marks that are contrary to public law and morality, contain prohibited words (like patent, registered design, copyright, etc.), contain national emblems or names of single chemical substances.[2]
Duration for a Trademark Protection
Section 23 of the TMA provides for the duration and renewal of trademark protection. After registration, a trademark is protected for a period of seven (7) years which starts from the mark’s registration date as it is retrospective. While renewal is for a total period of fourteen (14) years.
Process of Application
Typically, the process of filing an application to the issuance of a certificate of registration takes 10 to 18 months. During the period of application, the registry shall make a publication in the Trade Marks Journal[3] , and within two months of such publication, objections may be raised with regards to granting the registration of such mark[4]. If an application is approved, the trademark shall be registered in the Trade Marks Register. Regardless of the issuance of a certificate, a mark can be unregistered on grounds of non-use, non-renewal or breach of conditions[5].
The registry may also refuse the grant of a trademark registration on the following grounds.[6]
- Where the proprietor is not the actual owner.
- Where the trademark was registered in bad faith.
- Where the trademark was fraudulently obtained.
- Where the trademark is identical to another trademark.
Who Can Register and Own A Trademark?
Note that juristic, statutory and natural persons can own a trademark. An accredited agent with a power of attorney can also register a trademark on a person’s behalf. A trademark owner has the right to exclusive use of the mark and can institute an infringement action. Only a registered trademark owner can transfer and assign his rights subject to the provision of section 26 of TMA.
Penalties for Infringement
Although the registration of a trademark cannot stop an infringer from infringing on a person’s right, the provision of penalties can however provide remedies to the infringed. In respect to rights infringement, the Merchandise Act provides for imprisonment for a term of two years after conviction of an offence by a High Court or a fine or both[7]. The Trade Malpractices (Miscellaneous Offences) Act of 1992 also criminalizes offences like false labelling, false packaging, misleading or creation of a wrong impression as to the quality, name or composition of a product. Punishment for an offence herein is a fine of not less than N50, 000.
Industrial Design in Nigeria
Industrial design is a form of intellectual property (IP) that relates to the aesthetic appearance of a product that gives it a special form. It can be in a three or two dimensional shape. Industrial design cuts across a variety of products and is used to appeal to consumers. It is not to be confused with a patent. A patent protects an invention that offers a new technical solution in an industry. Meaning, the invention (either a process or product) must be functional. On the other hand, Industrial design protects the appearance of a product, which does not need to be functional before it’s protected.
The Patent and Industrial Design Act of 1971 (hereinafter referred to as the Act) provides for industrial designs in Nigeria. The regulatory body is the Patents and Designs Registry. An industrial design may also be protected under unfair competition and works of copyrights. Protection for a registered industrial design shall be effective in the first instance for five years from the date of the application for registration. Upon payment of the prescribed fee, it may be renewed for two further consecutive periods of five (5) years. The renewal fee shall be paid within the twelve months preceding the renewal period to which it relates.[8]
Rights of a Design Owner:
Registration of an industrial design confers the following rights on the design owner. It precludes any other person from doing any of the following acts:
- Reproducing the design in the manufacture of a product;
- Importing, selling or utilising for commercial purposes a product reproducing the design; and
- Holding such a product for the purpose of selling it or of utilising it for commercial purposes.
Note that a person’s right may be assigned, transferred by succession or held in joint ownership. An assignment shall be in writing and signed by the parties.
Generally, a person who creates a design or, in cases of contract work, his employer, can apply for registration. The applicant can be either an individual (e.g. a designer) or a legal entity (e.g. a company). In either case, the application may be made directly or through an agent. If you are a foreign applicant you may be required to be represented by an agent duly authorized by a Power of Attorney.[9]
Application Process and Requirement:
Priority is given to the first to file an application in relation to industrial design protection[10]. The process generally takes six (6) months or more. As a requirement for registration[11], the design must be new; it must not have been disclosed to the public. However, section 13 (4) of the Act gives an exception in relation to unregistered designs. It states, ‘an industrial design shall not be deemed to have been made available to the public solely by reason of the fact that within the period of six months preceding the filing of the application for registration the creator has exhibited it in an official or officially recognised exhibition.’ Another requirement is that, the design must not be contrary to public order or morality. It must be for commercial purposes and designs should be developed through an independent process.
In furtherance of the designs for commercial purposes, Section 15 (2) of the Act allows for class application. It provides that, ‘a single application may relate to any number of industrial designs not exceeding fifty, if the products to which the designs relate are of the same kind or, where a classification has been prescribed, of the same class.’
To register a design in the Patents and Designs Registry, you have to:
- Fill an application form including your name, contact details and drawings, and/or photographs of the design(s) in question.
- File a written description or statement of novelty of the industrial design(s). It should adequately cover all the distinctive aesthetic features of the design and describe which feature(s) is/are most important. Also, attach a sample of the design.
- Pay the appropriate registration fee.
After the proper formal examination and approval of the design, it is then entered into the design register and a design registration certificate will be issued.
Conclusion and Recommendation:
In the course of the article, we had a glance of the legal and institutional framework of Trademark and Industrial Design, the features of the intellectual property rights, the process and documents required for registering a trademark and design, among others. Although there are provisions of the law in respect to regulating trademark and industrial design in Nigeria, these laws are however out-dated and needs to be reviewed to accommodate current IP issues in Nigeria.
In addition to ensuring formal requirements are met, a substantive examination should be conducted to determine whether an industrial design is new or original. Improvements should also be made in regards to record keeping of the trademark, patents and design register.
The Trademark Act should be expanded to include olfactory marks and sound marks as a form of trademark. Provisions also need to be made in respect to the use and enforcement of trademarks in the virtual world.
Most importantly, an action is required in regards to domesticating the treaties of the World Intellectual Property Organization to ease application of Trademarks and Industrial Designs in different countries. For example, the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement and the Hague Agreement Concerning the International Deposit of Industrial Designs.
Precious Odega can be reached via the mail at: enquiry@harlemsolicitors.com
FOOTNOTES:
[1] Section 43 of the Trade Mark Act 1967
[2] Section 9 to 13 of the TMA
[3] Section 63 of the TMA
[4] Section 20 of the TMA
[5] Sections 23, 31 and 32 of the TMA
[6] http://ICLG.com/pratice-areas/trade-marks-laws-and-regulations/nigeria
[7] http://ICLG.com/pratice-areas/trade-marks-laws-and-regulations/nigeria
[8] Section 20 of the Patents and Design Act
[9] Looking Good: An Introduction to Industrial Designs for Small and Medium sized Enterprises. WIPO publication No. 498.
[10] Section 14 of the Act
[11] Section 13 (1) of the Act
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