The trademark registration in Nigeria provided for by Trade Mark Act LFN 1990 is one important way to protect and distinguish someone’s trade symbols in Nigeria.
All individuals or entrepreneurs or companies should strive at all times to protect their business’ identities by registering unique symbols or trademarks of the business.
A Trademark is a recognizable name or design, which is legally registered and used to identify and distinguish a product or entity from others.
Some of the trademarks that can be registered include name, slogan, domain name, shape, colour and logo. The trademark is usually registered through the Trademarks, Patents and Designs Registry, Commercial Law Department of the Federal Ministry of Industry, Trade and Investment in Nigeria.
Trademark registration in Nigeria gives the owner the right to use such registration to exclude others from violating or willfully copying or usage by a third party without consent. A registered owner of a trademark may institute an action in court to block any infringements or unauthorized use of their trademarks.
HOW TO REGISTER A TRADEMARK
Essentially, there are three major stages involved in trademark registration, which I will briefly explain as follows:
1) SEARCH & APPLICATION
The first step required to be taken for any person or organization desiring to register a trademark is to brief an Agent, usually a lawyer with the trademark or the description of a symbol or logo or design to be registered.
A search is conducted on the trademark, and if it is not in conflict or too similar with any existing trademark, an application for the registration can proceed.
The Registrar will issue an acknowledgement upon the recipient of any due application. At this stage, the applicant can have confidence, but not an assurance, in the success of the entire registration process.
It is worthy of note to state that different payments are to be made at this stage for search and application processing.
Whereupon an application has been approved after a successful search has been conducted, the Registry will accept, register the trademark and issue an Acceptance Letter to the applicant. The Acceptance Letter is initial evidence that the trademark has been duly registered.
3) PUBLICATION AND CERTIFICATION
The third stage involves publication in the trademark journal and certification. This is the final stage.
Upon the acceptance of the registration of a trademark, the Registrar will ensure the notice of the application is published in the Trademark Journal. Such notification will include the full details of the application and the applicant.
By virtue of this publication, any interested person would have the opportunity to oppose or object to the registration. Any person or organization who considers that a trademark being sought may likely confuse or mislead the public in light of any pre-existing trademarks may protest to the Registrar to stop such registration by filing a notice of opposition in a prescribed form.
Protests or oppositions containing the grounds upon which the protest is made must be sent to the Registrar of Trademarks within two months of publication of notice in a journal.
The Registrar will notify the applicant of any protest or opposition received. The applicant may respond to such opposition within one month from the date of receipt of such notice from the Registrar. An applicant who failed to respond to the opposition received with his or her own counter-statement may be deemed to have abandoned his or her application.
Where Registrar received the response of the applicant stating why the applicant is entitled to such trademark, the Registrar of Trademark shall constitute a Tribunal to determine the conflict in favour of one of the contending parties.
Where there is no opposition to the publication in the journal, or opposition has been made and successfully resolved in favour of the applicant, the Certificate of Registration will be issued for the trademark sought.
The Certificate indicates the evidence of due registration and completion of all processes. It confers a right on the proprietor or the owner to use the trademark to the exclusion of every other entity.
However, where any other person or entity successfully challenged the applicant in opposing a trademark registration, the Registrar will issue a letter of refusal to the applicant.
BASIC REQUIREMENTS FOR TRADEMARK REGISTRATION IN NIGERIA
The basic requirements every intending trademark applicant should prepare or provide include the followings:
COST OF TRADEMARK REGISTRATION
Most people often want to know how much it cost to register a trademark in Nigeria. The price of trademark registration in Nigeria includes the filing fees and the professional fee of the lawyer or agent handling such application. The price may be differed most times, taking into consideration that the professional fee of various trademark lawyers or agents cannot be the same. By and large, the total cost, including the professional fee for registering a trademark, may range between N120,000(about $340) to N180,000(about $500). Another factor that may determine the total cost of trademark registration is whether the trademark is owned by a local or international company or individual. If the trademark is foreign-owned, a trademark attorney may charge a higher amount than the ones owned locally. Every intending applicant should contact a trademark accredited agent for individual negotiation of the total cost of registration.
Meanwhile, the above-suggested total cost must include all the three essential stages of trademark registration, which are Search, Acceptance and Certification. An applicant seeking to engage an agent to temporarily complete the registration only to the second stage of Acceptance, with an intention of completing the certification stage later, may bargain with an agent for an affordable amount. Some trademark applicants are often after immediate registration. They may engage one attorney for the registration up to the second stage, which involves Acceptance and may later engage another agent for the completion stage, which involves publication and certification. It is strongly advised that any applicant who wishes to appoint a single agent to complete the entire process up to the completion or final stage should specifically mention it to such agent and bargain for the appropriate cost for the entire process.
RENEWAL OF TRADEMARK IN NIGERIA
Trademark lasts for period 7 years and can be renewed after expiration from time to time. Every subsequent registration lasts for 14 years. The requirements for a trademark renewal are as follows:
ASSIGNMENTS & RECORDING IN NIGERIA
Every legitimate trademark titleholder may assign such trademark to another person or entity for usage within a period of time. An Assignee or Assignor of the trademark right may apply to the trademark office for the recording of such title or right in favour of the Assignee. However, it preferable for the Assignee to carry out the recording itself or himself/herself, since only the holder of a trademark title or right may enforce such aright against any infringing third party. The requirements for trademark recording are as follows:
CLASSES OF TRADEMARK
The trademark registration is classified into 45 different categories in accordance with the Nice international system of classification. It is important for every applicant to understand the classes the registering trademark belongs to or closely align with. However, a trademark may be registered in more than one class where the applicant is seeking protection in both classes. And where applicant seeking protection in multiple classes, separate filing fees must be paid for each of the classes. The 45 trademark classes in Nigeria can be found here.
A patent is an authority or license conferring a right or title on an inventor for a set period of time, especially the right to exclude others from making, using or selling an invention. Patents protect new inventions such as new processes, machines and chemicals.
Patent registration is also handled by the same government department that handles trademark registration, which is the Trademarks, Patents And Designs Registry, Commercial Law Department of the Federal Ministry of Industry, Trade and Investment. Registration of patent requires that an applicant must have invented certain ideas, which can be protected not just a mere expression of it. Patenting an invention gives the holders the legal right to challenge any unauthorized of the invention by a third party.
The requirements for patent registration are different from the trademark registration. An inventor may appoint an attorney to represent him or her for patent registration in Nigeria.
The cost of Patent filing depends on individual patent attorney appointed for the work. By and large, Nigerian patent attorneys charge between N150,000(about US$420) to N280,000(about US$800) for filing and professional fees to complete a single patent registration.
In conclusion, it would be important to mention that there are several benefits accrued to the registration of the trademark and patent in Nigeria. Such benefit includes brand and identity protection from any infringement. Additionally, an owner of a trademark can sell or lease out his or her trademark to another person or organization if the owner chooses in future. It is also possible for the owner of a trademark to allow certain persons or organizations to use his or her registered trademark with him or her in the future.
Companies and individuals that require the services of trademark registration in Nigeria and patent registration are advised to speak to a trademark lawyer or consultant in Nigeria.
By Intellectual Property Law Team at the Resolution Law Firm, Nigeria. Resolution Law Firm is a licensed Trademark and Patent Attorney in Nigeria.