A trademark opposition in Nigeria is administrative proceedings before the Trademark Registry in which one party seeks to prevent another from registering a proposed or an accepted trademark.
A trademark is a branch of intellectual property that guarantees rights over goods and services of an owner against unfair imitation by other persons. The object of most trademark laws, therefore, is to permit an enterprise by registering the trademark, so the owner can obtain an exclusive right to use the assigned mark to the exclusion of others.
In our previous write-ups, we explained the procedures for registering a trademark in Nigeria.
FILING OF TRADEMARK OPPOSITION
A trademark opposition in Nigeria can be filed by any owner of an existing trademark who believes it would be damaged by the registration of an opposed mark. Such an opposer must file an opposition within two months from the date of publication of the application in the trademark journal.
The person or business filing the Notice of Opposition may be designated as the Opposer while the other party seeking to register the infringing mark is generally referred to as the Applicant.
GROUNDS FOR FILING A NOTICE OF TRADEMARK OPPOSITION
Filing a trademark opposition must be based on cogent grounds or reasons. The following are usual grounds by which a trademark opposition may be filed:
- The trademark is confusingly similar or identical to a previously registered trademark.
- The trademark contains deceptive or scandalous matters or designs.
- The trademark contains names of chemical substances, use of the Coat of Arms of Nigeria, use of any emblem or title such as President or Governor without appropriate authorization.
- The trademark contains geographical names.
- The trademark contains some restricted words and/or symbols.
- The trademark is devoid of distinctive character.
- The applicant of the trademark has no intention to use it.
- The applicant is not the true owner entitled to register the trademark.
PROCEDURE FOR OPPOSING TRADEMARK APPLICATIONS
Any interested party may file an objection by giving a notice of opposition within two months of the publication in the trademark journal, stating the ground(s) for the opposition. Under the Nigerian Trade Marks Act, a party who is seeking to oppose a trademark application must do so in writing by filing a Notice of Opposition as provided for in section 20(1)& (2) and payment of the prescribed filing fees.
The Registrar of Trademarks serves the notice of opposition on the applicant, who has one month to file a counter-statement.
Within one month of receipt of the applicant's counter-statement, the opponent must file evidence in support of its opposition in the form of a statutory declaration. If the opponent does not file the evidence within the prescribed period, the opposition is deemed abandoned.
Following the delivery of the opponent's evidence, the applicant has one month to file its answering evidence. If he fails to do so, the application is deemed abandoned.
If the applicant sends such a counter-statement as aforesaid, the Registrar shall furnish a copy to the persons giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.
According to Section 20(5), it is worthy to note that the Registrar may request a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice, to give security for costs of the proceedings before him relating to the opposition, and in default of such security being duly given may treat the opposition or application, as the case may be, as abandoned.
The opposition hearing takes place before the Registrar, who shall after hearing the parties and weighing the evidence, takes a decision.
It is important to note that the decision of the Registrar may be appealed to the Federal High Court.
A Notice of Opposition is a complaint filed by the Opposer, who may allege several grounds for refusal of a trademark registration against the Applicant. The Notice must be filed within two months of publication of a trademark in the trademark journal. However, the owner of an infringed mark may have recourse to the action of Passing-Off where it failed to submit within the stipulated time frame for a Notice of Opposition against an infringement on its trademark.
After successfully filing the Notice of Opposition, duly stamped and served on the Applicant the Trademark Registry hears the parties and considers the evidence, if the Opposer prevails, the Applicant's trademark application will be refused, resulting in the Applicant being unable to register the infringing trademark. However, if the Applicant prevails, the trademark shall be duly registered, and the certificate shall be issued to the Applicant upon application.
Finally, where a Notice of Opposition has been served on the Applicant and he/she failed to respond within a stipulated period, the proposed trademark shall be deemed to have been abandoned and such registration shall be refused accordingly by the Registrar of Trademark.
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.