Registration Of Trademark And Its Benefits1
- Introduction
The increasing prominence of intangible assets like Intellectual Property Rights (IPRs) has dictated the need for protective mechanisms to encourage continued human ingenuity and innovation. Trademark, a form of intangible assets, is an identifier that indicates the source and quality of products. Through the use of trademarks, brands create unique identities for their goods and services. In addition, trademarks distinguish similar goods and services of one competitor from another competitor.
- The Concept of Trademark
According to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.2 The World Intellectual Property Organisation defines a trademark as a sign or symbol capable of distinguishing the goods or services of one enterprise from those of other enterprises.3 Trademarks consist of any recognisable sign, design or expression that identifies products or services from a particular origin.4 A word, slogan, design, or a combination of all three can be trademarked if they indicate the source of goods and services. With the use of trademarks, consumers could be assured of the quality of goods and services purchased.5
A registered trademark gives the proprietor an exclusive right of use. This prevents others from using the trademark or similar mark on the same or similar products without the license or authorisation of the registered trademark proprietor.6
- Registration of a Trademark in Nigeria
Upon registration, exclusive ownership of a trademark is conferred on a proprietor which enables the proprietor to enjoy full benefits and protection provided under the law.
In Nigeria, the Trade Marks Act7 governs the registration of trademarks. By the provisions of the Act,8 a trademark must be registered in respect of particular goods or classes of goods. Under the Nice Agreement of 1957, trademarks are registered according to the class number and uniform specification in the member states of this special union, for either goods or services under the Nice Classification system.9 Article 2 of the Nice Agreement stipulates that: "...the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks." Each member of the Union may elect to utilise the classification either as a primary or subsidiary method of categorisation.10
Trademarks are registered at the Trade Marks, Patents and Designs Registry (Trade Mark Registry") of the Federal Ministry of Industry, Trade and Investment in Abuja. A prospective trademark proprietor is required to appoint, through a power of attorney, an accredited legal practitioner to apply for the registration of a trademark.
Prior to the application for registration, it must be ascertained that the trademark is registrable. A search should be conducted on the trademark database at the Registry to confirm the availability or otherwise of the mark prior to an application for the registration of the trademark. Although, an application can be made without conducting a search, there is a high risk of the mark being rejected by the Registrar if it is discovered that the mark is in conflict with a registered mark belonging to a different proprietor.11
Upon confirmation of the availability of the trademark and payment of registration fee, the details of the owner of the mark and particulars of the mark and the requisite statutory documents will be filed at the Trade Mark Registry. The mark will be examined by the Registry staff to determine the distinctiveness of the mark and to ensure that the mark is not similar or identical to a registered trademark.12 If it is satisfied that the mark is not in conflict with an existing trademark, the Registry issues an acceptance form. Subsequently, the mark will be published in the Trade Marks Journal inviting objections to the registration of the trademark from the public for a statutory period of two months from the date of publication.13 Once no opposition is filed challenging the application for registration within the statutory period, a Certificate of Registration will be issued by the Registry to the Applicant.14
A registered trademark is valid for a period of 7 years in the first instance, renewable for 14- year periods after the initial expiration.15
Notably, the Act recognises that proprietary rights may be acquired over unregistered trademarks. Based on the constant use and popularity of the trademark in the market, the proprietor of an unregistered trademark may acquire sufficient goodwill in its unregistered trademark that is protectable at law. Although, no action can be instituted to prevent or to recover damages for the infringement of such an unregistered trademark, the proprietor of such trademark can institute a common law action of passing off to enforce his ownership of the trademark.16 This was affirmed in the Supreme Court's decision in Omnia (Nig.) Limited v. Dyktrade Limited.17
- Benefits of a Registered Trademark
- Protection of Brand and Identity
Registering a business or incorporating a company at the Corporate Affairs Commission (CAC) does not guarantee protection of intellectual property associated with the registered business or corporate entity. The mark, logo, words and images used by the brands can only be protected under trademark registration. This prevents unauthorised use of the trademark by third parties and legal actions can be instituted upon infringement of the mark. The rights of a registered proprietor are also protected under the Companies and Allied Matters Act 2020 (CAMA). The Act provides that no business or company shall be registered by a name which would violate or conflict with any existing trademark registered in Nigeria unless the consent of the registered proprietor has been obtained.18
- Exclusivity / Licensing
A registered trademark grants exclusive rights to the owner of the mark for identification of goods and services. Once a trademark is registered in one or multiple classes, it prevents others from using such trademark or similar mark on the same or similar products of the trademark owner without the license or authorisation of the registered trademark owner.19 Companies and business owners have exclusive rights over the registered trademark which can be transferred to others through licensing or assignment. Licensing is the process whereby the owner of a registered trademark grants other companies or individuals the right/license to use such trademark for an advert, campaign or business.[20] In this regard, a registered user recordation should be lodged at the Trade Marks registry. An assignment entails a complete transfer of proprietary rights and ownership of a trademark to a different entity.
- Statutory Protection
The Trade Mark Act governs the registration of trademarks and confers rights on the owner of such marks.21 A trademark proprietor or brand owner may enforce its statutory rights against unlawful use of their registered trademark. Legal proceedings can be instituted against infringers to prevent further unauthorised use of the registered trademark and to recover damages on the previous use of the mark. Registration of a trademark by the owner is prima facie evidence of the validity of the claims of ownership over the mark.22 Injunctions, delivery up for destruction of infringing items, damages, account of profits etc., are benefits that accrue to a registered proprietor in the event of a successful infringement action.
- Value and quality of goods and services
Based on its popularity, a registered trademark influences consumer's decision on the quality of goods and services in the market. Consumers are more attached to brands with a recognized trademark due to its consistency and commercial value. A popular registered trademark in the global market is the "Half Bitten Apple" for computer devices. The trademark signifies the value and quality of such devices and generates tremendous income for its owners through direct use, licensing or outright sale either with or without the goodwill associated therewith. The source and origin of goods and services is recognized and validated through the consistent use of the trademark belonging to any business.
- Distinctiveness/Uniqueness
Goods and services are easily distinguishable from competing brands in the market through the proper use of trademark to minimise or eliminate consumer confusion. Registered trademarks are unique tools utilised by companies and business owners to advertise and promote their products and services. A registered trademark when deployed effectively improves brand awareness and the overall commercial value of a company's products and services.23
- Conclusion
Essentially, the value of registering trademarks cannot be overemphasised. The use of unregistered trademarks in Nigeria exposes businesses to several risks and threats of unauthorised appropriation. A registered trademark confers a set of rights upon the registered owner, which includes the right to exclusive use of the mark on the products or services for which it is registered and presents a more efficient way of establishing claims to and enforcing trademark rights in the event of third-party breach.
In converting brands into valuable trademark assets, proprietors must include intellectual property strategies that align with their business objectives. This can be achieved by consulting Intellectual Property lawyers or law firms for an assessment of the brands' IP portfolio and monetisation strategies.
Footnotes
1 Maryam Abdulsalam, Associate, Intellectual Property & Technology Department, S.P.A. Ajibade & Co., Lagos, Nigeria.
2 WTO, "TRIPs agreement" available at: https://www.wto.org/english/docs_e/legal_e/27-trips.pdf accessed on 6th June 2022.
3 WIPO, "about IP" available at: https://www.wipo.int/about-ip/en/, accessed on 7th June 2022.
4 Section 67, Trade Mark Act, Cap T13, Laws of the Federation of Nigeria (LFN), 2004.
5 Sandra Eke, "Why you need to protect your business hashtags and catchphrases" https://spaajibade.com/why-you-need-to-protect-your-business-hashtags-and-catchphrases-sandra-eke/ accessed on 17th June 2022.
6 Section 5 of the Trade Marks Act, Cap T13, Laws of the Federation of Nigeria (LFN), 2004.
7 Cap T13, Laws of the Federation of Nigeria (LFN), 2004.
8 Section 4.
9 See Nice Classification, available at: https://www.wipo.int/classifications/nice/nclpub/en/fr/ accessed on 9th June 2022.
10 Article 2(2) of the Nice Agreement 1979 (amended).
11 Section 17.
12 Section 17.
13 Section 20.
14 Section 22.
15 Section 23.
16 Section 3.
17 [2007] 15 NWLR (Pt. 1058) 576.
18 Section 852 (d) CAMA 2020.
19 Section 5.
20 Section 33.
21 Section 5 & 6. The rights include certification of the trademark, exclusive use of the trademark on products or services for which it is registered, preventing infringement on the trademark, licensing the trademark, etc.
22 Section 49.
23 John Onyido, "A Review of Commentaries and Analysis on Nigeria's Trade Marks Act By Mark Mordi" available at: https://www.afronomicslaw.org/category/analysis/review-commentaries-and-analysis-nigerias-trade-marks-act-mark-mordi accessed on 1st July 2022.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
