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01 March 2021
This is the third article in a series on Nigerian trademark procedure and practice.(1)
Is it compulsory to record licence agreements with the trademark office?
It is not mandatory to record a licence agreement with the Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment, but it is advisable. Recording a licence agreement establishes a direct connection between authorised use and the registered trademark owner. Failure to record a licence agreement may leave the mark vulnerable to cancellation on grounds of non-use where it cannot be established that the mark is being applied under the owner's licence and control.
Is there a grace period to renew an expired mark?
Under the Trademarks Act (Laws of the Federation of Nigeria 1990) (enacted in 1965), renewal applications should be made no more than three months before the registration expires.
When does a registered trademark become vulnerable to cancellation if there has been no genuine use?
Any interested party may apply – to the court or to the registrar – to remove a registered mark from the register in respect of any of the goods for which the mark is registered where a continuous period of five years or longer has elapsed, during which:
What constitutes genuine use of a trademark?
The Trademarks Act does not define 'genuine use'. However, a high threshold of proof is not required; minimum use is acceptable. What constitutes 'minimum use' is determined by the facts of each case. It must be proven that the mark has been used as a trademark in the market and that the owner is not simply hoarding the rights to the mark.
The rights conferred by a trademark illustrate acts that constitute 'genuine use' of a mark, including:
In infringement cases, these acts constitute unauthorised use of a mark. The same acts by a trademark owner constitute genuine use.
Does genuine use have to take place in the exact form in which the mark is registered?
Not necessarily, but the difference must be negligible and not significant enough to alter the distinctive character of the mark.
Are there other grounds for removal of a mark from the register?
A registered trademark can be struck off the register if:
Are well-known marks recognised?
The Trademarks Act does not recognise well-known marks. However, Nigeria is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which protects well-known marks internationally. While the provisions of the TRIPS agreement have yet to be transposed into Nigerian law, they have a persuasive effect.
For further information on this topic please contact Bunmi Binitie at Abdulai Taiwo & Co by telephone (+234 1 496 7982) or email (firstname.lastname@example.org). The Abdulai Taiwo & Co website can be accessed at www.abdulaitaiwo.com.
(1) For earlier articles in the series, please see "Trademark procedure and practice FAQs: filing specifics" and "Trademark procedure and practice FAQs: office actions". For the final article in this series, please see "Trademark procedure and practice FAQs: enforcement".
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