Trademark is one of the most important intangible assets of any business, it permits uniqueness in branding, and also distinguishes businesses from one another. The need to differentiate businesses especially those with similar nature, from time immemorial triggered the emergence of trademark and continues to prompt its evolution.
Trademark is simply any unique and recognizable symbol or sign that differentiates and identifies the products or services of a particular business from another. Trademark can be owned by any legal entity, that is, natural person or a corporate person duly registered under the law. An entity’s trademark can be on their product, label, package, voucher, etc.
Trademark, as a major identification for any brand can be used by others under licensing agreements and any unauthorized usage of such trademark by any other business will amount to brand piracy.
Upon infringement, the registered owner of a trademark can bring a legal action against the infringer. What this means is that an action cannot be brought for the enforcement any right pertaining to an unregistered trademark in Nigeria.
Pursuant to Section 3 of the Trademark Act, “No person shall be entitled to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered trademark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.” The only remedy available to an unregistered trademark in Nigeria is the common law remedy of passing off which however comes with its risks and uncertainties.
Position of unregistered trademarks
The smooth use of an unregistered trademark can be possible where such trademark has been in long and popular use by the entity in question before being registered by another entity. This was given judicial credence to in the case of American Cyanamid Co. v. Vitality Pharmaceuticals Ltd. 34 NIPJD [SC 1991] 12/1989.
It is however always better to register a trademark regardless of how big or small a brand is because an unregistered trademark owner will have to rely on goodwill and popularity, which are often unreliable, to protect his trademark in case of infringement. When a trademark is duly registered burden of proof becomes easier in litigation, enforcement of rights becomes easier, legal remedies available will be easily accessible.
Considering the case of a Nigerian comedian, Chukwuemeka Emmanuel Ejekwu, popularly known as Mr Funny or Oga Sabinus, who threatened to institute a N1 billion suit against Friesland Foods for using his trademark ‘something hooge’, after the company used the phrase ‘something hooge’ to advertise Peak Milk. He also threatened to sue UAC Foods to the tune of N100 million for the use of his animated image in an advert for the Gala sausage roll.
Sabinus has however been unable to proceed with his threats. We believe the major reason for his inability to institute these suits is that it was revealed that he never trademarked his image and slang ‘Something hooge’, he therefore cannot sustain a suit against these companies. Whether he and these companies were able to reach any form of agreement is however not to public knowledge.
A business that has a trademark is put in a better and legal position when it has a registered trademark. The business enjoys monopoly of use, and such a business has the right to prevent others from using an identical or confusingly similar trademark for the same goods or services or description of goods or services.
Some big brands tend to ignore the trademark of their business because they erroneously believe their established trade names would cover for other unregistered marks which is very dangerous. As an intelligent startup brand, having a trademark strategy is an invaluable asset, which must include duly registering all trademarks to avoid future loss of revenue and confusion for customers.
Mode of registration
In Nigeria, registration of trademark is done at the Trademarks, Patents and Designs Registry of the Federal Ministry of Industry. Registration should be carried out by an appropriate agent to avoid costly errors. Trademark once registered is valid for an initial period of 7 years, after which the registration becomes subject to subsequent renewal every 14years.
The process for registering a trademark in Nigeria includes:
- Availability search: Your agent must conduct an availability search at the registry to ascertain whether the intended trademark is still available. When such agent ascertains that the intended trademark has not been registered by any existing business, then the agent can go ahead to register.
- Application & Acknowledgement: Your agent at this stage is to fill an application form detailing the personal information of the owner of the trademark, the name, and specimen of logo or mark intended to be registered. Upon payment of required fees, acknowledgement of the application is granted.
- Acceptance: The registry thereafter goes through the application and confirms that the intended mark or logo is not in conflict with any marks and logos previously registered, and that said mark is registrable. This constitutes acceptance of the trademark.
- Publication of the trademark: At this stage, the registry publishes the accepted trademark in her trademark’s journal so that anyone that has objection to it can file same in a period of 2 months with the registry.
- Certification: Upon publication, if it is the case that there was no objection to the accepted trademark, or where there was an objection, but it was overruled, the applicant will be issued a Certificate of registration by the registry. If however there was an objection that was sustained, the application will be rejected.
Conclusion
In Nigeria, the extent to which a trademark is protected is tantamount to its registration. Although, unregistered trademarks that have been in long use may have some form of protection; but they are usually unable to enforce that they have a right of action and if allowed to institute an action in court, remedy is often inadequate or null in cases of infringement.
Hence, it is of utmost important to have your trademark registered.
To speak to a lawyer about registering your trademark, please click HERE.
ALUKO ADEYEMI AND ASSOCIATES 