What statutes and regulations govern trademark rights in Nigeria?
The following statutes and regulations govern trademark rights in Nigeria:
- the Trademarks Act (Laws of the Federation of Nigeria 1990) (enacted in 1965);
- the Trademarks Regulations 1990 (enacted in 1967); and
- the Merchandise Marks Act (Laws of the Federation of Nigeria 2004).
Which authorities are responsible for granting, administering and enforcing trademark rights in Nigeria?
The Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment administers the protection of trademarks in Nigeria.
Does Nigeria participate in any trademark protection treaties or other similar agreements?
Nigeria is a party to:
- the Paris Convention for the Protection of Industrial Property;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).
However, Nigeria's trademark laws have not been updated to include the provisions of these international agreements.
Does Nigeria adopt the first-to-file or first-to-use basis for trademark rights?
Nigeria is a first-to-file jurisdiction.
Is there a use requirement for filing?
Prior use of a mark is not a requirement for filing.
What are the requirements for filing a Nigerian trademark application?
Trademark applications must include the following information:
- the applicant's details (full name and address);
- a representation of the mark;
- the relevant goods and services covered and the applied-for classes;
- a power of attorney or authorisation of agent; and
- the English translation of any non-English word contained in the mark.
If a trademark is already known internationally, must it still be registered in Nigeria?
Yes – if the goods and services are traded in Nigeria.
A local trademark registration is a pre-condition for product registration at the National Agency for Food and Drug Administration and Control.
Internationally well-known status is of persuasive influence in opposition proceedings, especially in establishing bad faith.
Who can file a trademark application?
Accredited trademark attorneys, agents, individuals, companies and firms can file trademark applications on behalf of trademark applicants or owners.
What filing systems are available in Nigeria?
Nigeria has manual and online filing systems. The manual filing system is further categorised as the pre-Industrial Property Automation System (IPAS) and the IPAS.
What are the differences between the pre-IPAS, IPAS and online filing systems?
The pre-IPAS system is a manual filing system and was used by the Trademarks, Patents and Designs Registry before the introduction of the IPAS (hence it is known as the 'pre-IPAS'). Under this system, applications were filed manually and all types of request (eg, searches, recordings and renewals) had to be processed manually by obtaining the physical files of the concerned marks. Under this system, record keeping was chaotic and the system was synonymous with long delays.
The IPAS improved operations and although applications are still filed manually (through the submission of hard-copy applications and supporting documents), the system allows for the automatic digitalisation of such applications and documents and official documents issued by the Trademarks, Patents and Designs Registry. Unlike marks filed under the pre-IPAS, it is easy to obtain information on IPAS marks and process requests concerning such marks as IPAS marks are captured in the registry's digital database.
The online system is more popular and effective in all respects as it allows IP practitioners and agents to file trademark applications on the Trademarks, Patents and Designs Registry's online portal swiftly and conveniently. On filing, an automatic filing receipt is generated, unlike with the manual system, under which an acknowledgment letter is not issued until weeks after filing. Applications filed online take less time to process than manual ones.
Can pre-IPAS or IPAS applications be upgraded to online applications?
There is no system for upgrading manual applications to online ones. Manual applications remain as such because the IPO operates two different filing systems: a manual one and an online one.
Is a power of attorney or authorisation of agent form required for filing?
Yes – a power of attorney or authorisation of agent form simply signed and detailing the full particulars of the applicant (ie, its full name and address) and the capacity of the signatory (where the applicant is a firm or company) is a requirement for filing. The form is completed in favour of the local trademark attorney or agent as the enabling instrument to act for the applicant. Thereafter, all official documents and forms can be submitted by the local agent or attorney.
Until replaced or substituted by another local agent, the local agent remains responsible for:
- processing the trademark registration;
- defending oppositions (if any);
- providing an address for the local service of documents; and
- maintaining renewals of the mark.
Where an application is to be filed in several classes, is a power of attorney or authorisation of agent form required for each class?
A single power of attorney mentioning the mark will suffice for filing applications in different classes.
Must the power of attorney be legalised or notarised?
Notarisation and consular legalisation of the power of attorney or any document is not a legal requisite for filing a trademark application.
Is priority filing accepted?
No – foreign priority cannot be claimed for trademark applications in Nigeria.
What classification system is used?
As Nigeria is a party to the Nice Agreement, it uses the International Classification of Goods and Services (Nice Classification).
Does Nigeria accept Nice Classification class headings?
Yes – applications can be filed using the Nice Classification class headings. Further, applicants can provide the specific goods or services in the class to be covered by the registration.
Are multi-class applications allowed?
No – a separate application must be filed for each classification of goods and services for which a trademark is to be registered.
Is there any disclaimer practice?
At the filing stage, the trademark owner may disclaim any right to the exclusive use of any part of the mark which contains matter common to trade or otherwise of a non-distinctive character. Further, in deciding whether a trademark should be entered or remain on the register, the Trademarks, Patents and Designs Registry or the courts may require the trademark owner to disclaim any right to the exclusive use of any part of the mark to which it is deemed to be unentitled.
What is the estimated time from filing to registration (without opposition)?
The official assumption is that an online registration can be concluded within eight to 12 months. In practice, it may take longer where an application has not been advertised in the Trademark Journal.
In summary, what is the procedure for a 'smooth' trademark registration in Nigeria?
Application filing stage
The application is filed with the requisite information and the power of attorney form and an official acknowledgement reflecting the official number and filing date of the application is issued.
An official preliminary search is conducted as to distinctiveness with respect to existing and pending registrations and the Trademarks, Patents and Designs Registry examines the application for registrability, taking into consideration possible conflicts with prior registered or pending marks and whether the mark is inherently not registrable.
If the registry finds the trademark acceptable for registration, the applicant will be furnished with a notice of acceptance.
Publication stage
Every trademark application must be advertised in the Trademark Journal and is open to opposition for two months from the date of advertisement.
Certification stage
If no objections are received within the specified period or no objections are sustained, the Trademarks, Patents and Designs Registry will issue the applicant with a certificate of registration.
Are physical certificates issued for online applications?
Yes – physical certificates are issued for all applications.
What is the date of registration?
The date of initial filing (ie, the date on which the application is filed) is the date of registration.
How long is the validity period for trademark registrations?
Registered trademarks have an initial validity of seven years. Thereafter, registration is indefinitely renewable for 14-year periods.
Does use of the ® mark make a trademark legally recognised?
No – it is not mandatory to use the ® mark. However, use of the ® mark for an unregistered trademark is prohibited by the Trademarks Act and is a punishable act.
