This is the final article in a series on Nigerian trademark procedure and practice.(1)
Legal and administrative proceedings
What legal or administrative proceedings are available for enforcing trademark rights in Nigeria?
The initial forum for trademark dispute settlement is the Opposition and Administrative Hearing Panel of the Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry.
Thereafter, appeals may proceed to the Federal High Court, the Court of Appeal and ultimately the Supreme Court. The Federal High Court is the primary dispute forum through which registered trademark owners can institute actions for infringement and passing off.
What options are available to trademark owners to enforce their rights?
A trademark owner can protect its rights by sending a cease and desist letter to the infringer, which informs the infringer that:
- the owner has rights in the mark;
- the infringer is violating those rights; and
- the infringer must cease and desist from performing further infringement acts.
The letter also states the consequences of continued infringement.
This option is desirable as it enables parties to settle a dispute without litigation. Where the infringer continues to perform the infringement acts, the cease and desist letter evidences the owner's early warning to the infringer and prevents the infringer from claiming that it was unaware that it was violating the owner's rights.
Where the application for the infringing mark is still pending, the owner can monitor the Trademark Journal and file an opposition notice against the infringing mark before it proceeds to registration. An opposition notice must be filed within two months of the mark's advertisement in the journal and state the grounds for opposing registration. Compared with protracted litigation, this option is usually a quicker and cheaper way to prevent the continuous use of an infringing mark.
Where a trademark owner is aware of likely or actual infringement of its mark, it can institute a court action for infringement or passing off.
What remedies are available in Nigeria to a party whose trademark rights have been infringed?
The following remedies are available:
- punitive, special and general damages;
- preliminary and final injunctions, which prevent current and future infringement acts;
- the delivery up or destruction of infringing goods; and
- payment of profits or income from the sale of the infringing goods.
Is trademark customs recordation available?
Trademark customs recordation is not available. However, the Nigeria Customs Service is responsible for seizing and preventing the importation of smuggled and infringing goods into Nigeria and therefore contributes to anti-counterfeit measures. Where notified and provided with relevant information, the Nigeria Customs Service can identify, detain and seize imported goods that are fake or counterfeit upon entry into Nigeria.
Endnotes
(1) For earlier articles in the series, please see "Trademark procedure and practice FAQs: filing specifics", "Trademark procedure and practice FAQs: office actions" and "Trademark procedure and practice FAQs: post-registration stage".
