This is the second article in a series on Nigerian trademark procedure and practice.(1)

Grounds for refusal of applications

What are the absolute grounds for refusal of an application in your jurisdiction?

Applications are refused on absolute grounds if a mark:

  • is deceptive or confusing;
  • is descriptive;
  • lacks distinctiveness;
  • contains the name of a chemical substance;
  • is scandalous or contrary to law or principles of morality;
  • contains a representation of the Nigerian coat of arms or flag or other government emblems; or
  • contains restricted words, such as 'patent', 'patented', 'registered', 'registered design', 'copyright', 'red cross' or 'Geneva cross'.

What are the relative grounds for refusal of an application?

Applications are refused on relative grounds if:

  • the application was made in bad faith;
  • the applicant is not the true owner of the mark; or
  • the mark is identical or confusingly similar to an applied-for or prior registered mark.

Can letters of consent from or coexistence agreements with owners of existing rights be used to overcome an objection based on relative grounds?

Where a proposed mark is identical or confusingly similar to an applied-for or prior registered mark, the applicant must provide one of the following from the owner of the earlier mark in order for the objection to be overcome:

  • a consent or no objection to registration letter; or
  • a coexistence agreement.

Accelerated examination

Can accelerated examination be requested?

Accelerated examination is not available.

Opposition proceedings

What are the stages of opposition proceedings?

Opposition proceedings comprise the following stages:

  • The opponent files an opposition notice within two months from the date of advertisement of an offending mark in the trademark journal, stating the grounds of opposition.
  • Within one month of receipt of the notice, the applicant files a counterstatement, setting out the grounds on which it relies to support its application.
  • Within one month of receipt of the counterstatement, the opponent files evidence in support of the opposition notice by way of a statutory declaration.
  • Within one month of receipt of the opponent's statutory declaration, the applicant files its own evidence in support of the counterstatement by way of a statutory declaration. Failure to do so may be construed as abandonment.
  • The opponent has another opportunity to file a statutory declaration in reply to that of the applicant, addressing only the issues previously unaddressed. This is the end of the exchange of pleadings.
  • A hearing notice is issued. The hearing is scheduled at least 14 days from the date of the notice. Within seven days from receipt of the notice, any party that intends to appear must notify the registrar on the prescribed form. Failure to do so by either party may by treated as not wishing to be heard, and the registrar may act accordingly.
  • The registrar's decision is given based on the pleadings exchanged.

Scope of assignment

Can an application be assigned?

Only registered marks are assignable, unless an unregistered mark is assigned along with a registered mark that is used in the same business and is assigned at the same time to the same person. Otherwise, in order to transfer an application to a new applicant or owner, the procedure is to apply to change the applicant's name and address.

Endnotes

(1) For the first article in the series, please see "Trademark procedure and practice FAQs: filing specifics".