A registered trademark owner in Nigeria can assign his rights under Nigerian law. Trademark assignment is a process of transferring the ownership rights enjoyed by a registered proprietor (assignor) of a trademark to another person or new owner called the assignee.
The Trademark Registry, Commercial Law Department, Federal Ministry of Industry, Trade, and Investments is responsible for regulating the assignment of registered trademarks to a third party in Nigeria while the Trade Marks Act (the Act) is the legislation that governs trademarks in Nigeria. Although the law is silent on the franchising of trademarks, in reality, most companies give rights to third parties by way of a franchise to distribute certain goods or services for some time, while the Franchisee pays the Franchisor fees and royalties. The Franchisor enjoys perpetual ownership rights in the product or services covered by the registered trademark.
Trademarks are simply used to identify and distinguish an individual, firm, or company's brand products or services from another in the commercial market.
Once a trademark has been registered by an individual, firm, or company in Nigeria, the applicant is issued a Certificate of Registration, the proprietor of the issued Certificate is conferred by the Act the right of assignment of the registered mark.
The assignment of a trademark can be in respect of all the goods in the class of which it is registered or in respect of some but not all of the goods and services covered by the registered trademark.
Section 26 of the Act provides about the assignment of a trademark that "notwithstanding any rule of law or equity to the contrary, a registered trademark shall after the commencement of this Act be assignable and transmissible either in connection with the goodwill of a business or not".
By the provision of section 26 of the Act, the assignment of ownership of trademark can be in the goodwill of the business or not and it can be in respect of all the goods or services covered by the trademark or just some part of it. Hence, it becomes a full assignment when the trademark owner assigns the ownership in all goods and services covered by the registered trademark to a new owner and a partial assignment when it is only some part of the goods or services covered by the trademark that is assigned to the new owner.
Where a trademark is assigned by the registered owner to a third party in respect of goods and at the time of registering the mark, the trademark is used about those goods, if the assignment is made to a third party other than for the reason of the goodwill of that business, the third assignee will not acquire any rights under the assignment until he has satisfied the following to the trademark registry.
- The Assignee must within six (6) months from the date of the assignment or within such extended period if any, as the Registrar may allow, apply to the Registrar for directions concerning the advertisement of the assignment;
- Must advertise the assignment in any form and manner within the period the registrar may direct.
Note that when the Registrar of Trademarks gives directions to the Assignee for advisement of the assignment, he shall cause the notice of the assignment to be published in the trademark journal. Failure for the Assignee to comply with the requirement listed above would simply imply that the Assignee has no right or has not acquired any title under the assignment.
Section 29 of the Act provides that "the person for the time being entered in the register as proprietor of a trademark shall subject to any right appearing from the register to be vested in another person, have the power to assign the trademark and to give effectual receipts for any consideration of the assignment thereof". This as earlier stated simply means that the holder of a registered trademark be it an individual, firm or company has the rights as conferred by the Act to assign the registered trademark to another and the consideration in which the assignment is made must be evidenced by receipts.
The assignee must register the assigned title with the Trademark Registry as provided by Section 30 of the Act which states that "where a person becomes entitled by assignment or transmission to a trademark, he shall make an application to the registrar to register his title, and the registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trademark in respect of the goods in respect of which the assignment or transmission has effect and shall cause particulars of the assignment or transmission to be entered in the register".
It is also important to state that it is not only registered trademarks that can be assigned to a new owner, an unregistered trademark can be assigned to a third party provided that at the time of the assignment the following was present as provided by Section 26(3) of the Act;
- At the time of the assignment, the unregistered trademark is used in the same business as a registered trademark;
- Assigned at the same time and to the same person as the registered trademark and;
- Assigned in respect of the same goods for which the registered trademark is being assigned and in respect of all the goods to which the unregistered mark is used in that business.
Where the above criteria are not met at the time of the assignment of the trademark, an unregistered trademark cannot be assigned in this case to a new owner.
After a successful transfer of ownership by mode of assignment to a new owner, an instrument of assignment which is usually a Deed of Assignment will be issued to the assignee. The assignor or an accredited agent representative of either party can record the assignment of the trademark at the registry. The purpose of recording the assignment of the trademark is to protect the assigned mark against infringing third parties.
In recording the assigned trademark with the registry, the application must be accompanied by the following information;
- The name, trade, and business address of the assignee;
- The particulars of the instrument of assignment under which the assignee claims he is entitled to the trademark and a copy of the instrument and;
- A duly executed Power of Attorney.
In conclusion, where an individual, firm, or company is associated by a particular mark, symbol, signature, name, brand device, or a combination of all of this, it must be registered to enjoy exclusive ownership of the mark in relation to the goods or services in which it is related. Such a company can also go further to gain more revenues where the brand is now recognized in the commercial space by assigning or franchising the trademark to a new owner. It is important to note that there can be a full or partial assignment of ownership of the trademark to another. Also, the difference between the instruments of transfer of ownership is that in an assignment, the full ownership can be conferred to another and that will be recorded by the trademark registry while in franchising a brand, the Franchisor still enjoys the full rights of ownership of the trademarked brand, but the Franchisee can distribute products or services for a limited period under the franchised brand with consideration of fees and royalties, as may be agreed by the parties.
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.