Suppose you have a registered trademark in another country other than Nigeria for a name, logo, slogan, or design for your company’s product or services. You are wondering whether securing another trademark registration on the same brand in Nigeria is the right way to go. In that case, this article provides a comprehensive guide on registering a trademark in Nigeria, especially for those who already have a registered trademark in another country. We will delve into the legal framework governing trademarks in Nigeria, and the practical steps involved. By the end of this article, you will be able to understand whether or not having your trademark registered in Nigeria is a good business decision to make despite having a similar trademark registered in your home country.
WHAT IS A TRADEMARK?
A trademark is a distinctive sign, symbol, word, or combination of these elements, used by a business to identify its goods or services and to distinguish them from others. The primary purpose of a trademark is to prevent confusion in the marketplace, allowing consumers to easily recognize and select products or services based on their reputation and quality.
TYPES OF TRADEMARKS
Trademarks come in different forms, including:
1. Word Marks: This can be in the form of brand names or slogans. It is the brand name or slogan a business is known with. Like Cocoa Cola is a brand name and not a registration name of the business.
2. Design Mark: This is a logo or symbol a business is known with, that differentiates it from other competitors.
3. Composite Mark: This is just the combination of words and design to mark the outlook of the business name as different, and easily identifiable by the general public.
4. Non-Traditional Marks: These are the sounds, colors, shapes, or even smells that uniquely identify a product from others.
BENEFITS OF REGISTERING YOUR TRADEMARK IN NIGERIA
Registering a trademark in Nigeria offers several key benefits which are not limited to these:
a. Legal Protection: trademark ensures exclusive rights to use the trademark in connection with the registered goods or services.
b. Brand Recognition: it enhances consumer recognition and trust in the company.
c. Asset Value: it adds value to the business as an intangible asset that can be sold or licensed.
d. Deterrence: it discourages others from using similar marks, reducing the risk of infringement.
INTERNATIONAL TRADEMARK PROTECTION
Madrid Protocol: This is an international treaty that simplifies the process of registering trademarks in multiple countries. By filing a single application through the World Intellectual Property Organisation (WIPO), businesses can seek protection in any of the member states, including Nigeria. This system streamlines the process and reduces costs, making it an attractive option for businesses looking to expand internationally. The member states of this protocol are Australia, Canada, China, the European Union, Japan, Russia, the United States, the United Kingdom, and among other countries.
Regional Agreements: In addition to the Madrid Protocol, there are regional agreements that facilitate trademark protection across multiple countries within a specific region. For example, the African Regional Intellectual Property Organisation (ARIPO) allows for trademark registration across its member states through a single application.
PROCESS OF INTERNATIONAL TRADEMARK REGISTRATION
Registering a trademark internationally typically involves the following steps:
I. Preliminary Search: Conduct a search to ensure that the trademark is not in use in the target countries.
ii. File Application: Submit a single application through WIPO or the relevant regional body, specifying the countries where protection is sought.
iii. Examination of the Application: Each designated country examines the application according to its national laws.
iv. Publication and Opposition: The trademark is published for opposition, allowing third parties to contest the registration.
v. Registration and Renewal: Once approved, the trademark is crucial and must be renewed periodically to maintain protection.
vi. Understanding these steps and the associated legal framework is crucial for businesses aiming to secure trademarks in multiple countries, including Nigeria.
TRADEMARK REGISTRATION IN NIGERIA.
WHAT LAW(S) GOVERN TRADEMARK REGISTRATION IN NIGERIA?
Nigeria’s trademark laws are governed by the Trade Mark Act, Cap T13 Laws of the Federation of Nigeria, 2004. The Nigeria Intellectual Property Office(NIPO), under the Ministry of Trade and Investment, is responsible for the administration and enforcement of trademark regulations. The primary purpose of these laws is to protect trademark owners ‘rights and prevent unauthorized use of registered trademarks.
CRITERIA FOR REGISTERING A TRADEMARK IN NIGERIA.
To be eligible for trademark registration in Nigeria, the mark must be distinctive and not deceptive, scandalous, or contrary to public policy or morality. It should also not be identical or confusingly similar to an existing registered trademark. Eligible trademarks include devices, logos or symbols, slogans or phrases, letters, numerals, or combinations of any of these mentioned elements.
HOW TO REGISTER A TRADEMARK IN NIGERIA
The application process to register a trademark in Nigeria involves several steps which are to wit:
1. Preliminary Search: The person who intends to register a trademark will conduct a search to ensure the trademark is available and not already registered or pending registration.
2. File Application: An application to register the trademark will be submitted, including a clear representation of the mark and details of the goods or services it will cover.
3. Examination of the Application: The application is examined to ensure compliance with the Trade Marks Act and assesses the distinctiveness of the mark.
4. Publication: If the application passes the examination, the mark is published in the Trade Mark Journal, allowing third parties to oppose the registration.
5. Opposition: During the opposition period, (usually two months), third parties may file an opposition to the registration. If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark proceeds to registration.
6. Registration of Certificate: Upon successful registration, a Certificate of Registration is issued, granting the trademark owner exclusive rights to use the mark in connection with the registered goods or services.
I HAVE A REGISTERED TRADEMARK IN MY COUNTRY, CAN I REGISTER THE SAME TRADEMARK IN NIGERIA?
Registering a trademark in another country does not automatically grant protection in Nigeria. Businesses with trademarks registered in other countries can only seek protection in Nigeria by registering the said trademark in Nigeria.
HOW LONG DOES IT TAKE TO REGISTER A TRADEMARK IN NIGERIA
Trademark registration in Nigeria typically takes between 6 months to a year. The timeline involved includes filing and examining the application, publication in the trademarks journal, the window for third-party opposition, and final registration.
WHAT LEGAL REMEDIES DOES NIGERIA PROVIDE WHEN MY TRADEMARK RIGHT IS BREACHED?
Trademark owners in Nigeria have several legal remedies to take advantage of whenever their rights are breached. Some of them include;
i. Injunction: court order preventing further unauthorized use of the trademark
ii. Damages: compensation for financial losses due to infringement
iii. Account of profit: an order requiring the infringer to hand over profits made from unauthorized use
iv. Delivery up and destruction: court orders to deliver up and destroy infringing goods.
HOW TO MAINTAIN YOUR TRADEMARK AFTER REGISTRATION IN NIGERIA
1. Renew your trademark: trademark registration in Nigeria is valid for an initial period of seven years and can be renewed indefinitely every fourteen years.
2. Monitor your trademark: consistent monitoring is essential to protect your trademark. This includes:
3. Watching Services: Employ services that monitor new trademark applications for potential conflicts.
4. Market Surveillance: Regularly check the market for unauthorized use of the trademark.
5. Legal Actions: take prompt legal action against infringers to maintain the strength of your trademark.
CONCLUSION
Obtaining intellectual property protection of foreign trademarks in Nigeria can best be achieved by having the said trademark registered in Nigeria. Securing trademark protection in Nigeria is crucial for businesses aiming to safeguard their brand in this vibrant market. By adhering to the outlined procedures and leveraging available legal remedies, businesses can ensure robust protection of their trademarks. This proactive approach not only enhances brand value but also provides a solid foundation for long-term business success in Nigeria.
Do you need professional assistance with having your trademark registered in Nigeria as a foreigner or foreign company? You may contact us by leaving a message through the Whatsapp icon on this page or HERE, and we’ll attend to you.
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