Registering a trademark in Nigeria

A. WHAT ARE THE GENERAL REQUIREMENTS NEEDED TO REGISTER A TRADEMARK?:

1. Naming. Do a search to avoid conflicts with earlier registrants:

You should choose at least 3 names (which are unrelated to any similar businesses) in order to provide alternatives in the event that your desired name has already been registered, before even submitting your application. For instance, for a water bottling company choosing Evalina, Swanipa and Gossyer means an automatic rejection, because they are all too similar to Eva Water, Swan water and Gossy – all water bottling companies.

So the name search is a critical part of the any trademark registration. Most companies work on 3 – 6 naming alternatives on application, so it helps to be creative and think outside the box.   Other common reasons for trademark names include descriptiveness, deceptiveness, public policy, immorality and similarly registered marks.

2. Graphics.

Your logo must be reproduced on paper or on some cloth.  Your logo graphic should be distinguishable, distinct, and must not bear any resemblance to logos of companies in a similar field. For example, two vertical stripes for a sports footwear brand would automatically be rejected because of the close resemblance to Adidas. So again, be very creative, and spend some time doing some research, and letting your graphic designer know what your limitations are.

Once you have decided on your logo, the printed versions (in colour, or black and white) should be reproduced in about 6 – 20 copies on paper, and in cloth. Both paper and cloth copies are filed by the trademark office for reference.

3. Agents letter/Form of authorization to file the trademark on your behalf (Requires a lawyer):

As you know, our people ‘know’ to request, require and  fill forms. This form of authorization is a major requirement of the trademark office for the registration of the logo as a trademark. Its purpose is to filter out fraudulent 3rd party unauthorised ‘applicants’.

The form contents are : Name, Nationality, Address, Passport photograph (2), Company Name/Registrant name, International classification of goods to be registered, and finally a letter from the applicant to the agent (Mostly trademark lawyers) granting him the permission to register the trademark on behalf of you the applicant.

4. Filing fees and Stamp duties:

Following scrutiny, the registry requires evidence of the payment of filing fees and stamping. This is a major pre-requisite.

5. Cost of Filing:

For reasons best known to the authorities, the filing costs fluctuate between N80,000 and N100,000 depending on your trademark requirements. This includes legal fees, filing and processing fees. We lawyers have to charge additional fees because nothing is straight-forward in Nigeria. We have to find “connections” in the office (who have their own demands), who will help prioritise the searches so that the applicants are not kept waiting for months with stories like “Oga never approve am yet/We still de research, come back next week/We misplaced the passport photographs/When the Agent authorization form reached Abuja, they discovered that the applicant did not sign properly so they are sending back to Cross River”

6: How long does it take to register the trademark?

It does not take 3 months. It takes 2-3 years to obtain registration from date of filing the application (see delay excuses above)  On the bright side, you can begin to use the trademark 3 – 6 months after the name  and logo have been approved, pending the final certificate.  The trademark is presumed to be your intellectual property from the commencement of the registration process, however ultimate proof of ownership lies in the certificate which you’ll be waiting for.

The trademark is usually also published in the trademark journal to about 2 months, to allow for oppositions to be filed within this period. Your certoficate will be issued on the basis that no opposition to you rtrademark has been received.

7. Do I still need to  register my trademark in Nigeria, if it has previously been registered in Europe and US?

The answer is Yes. The reason is because Nigeria although being a member of the Nice convention that ratified all trademarks done internationally as binding on every country that is a signatory to that treaty, Nigeria is still backwards in terms of obtaining records of trademarks registered internationally and it poses a problem trying to collate all the registered trademarks done in almost 140 countries except trademarks that are extremely famous and recognized internationally such as coke, nike, HP, Yahoo etc.

So to avoid this problem, the trademark has to be registered in Nigeria all over again. The advantage of this is that if you register it in Nigeria, you gain priorietary rights over everyone in Nigeria who intends to register it. E.g, its possible for you to say you are a representative of MacDonald in Nigeria having bought the franchise to be the sole representative of the fast food company and from nowhere, somebody comes out and claims that he is also the sole representative of MacDonald in Nigeria and goes as far as showing that he has registered the Golden Arch Trademark in Nigeria. That person will have priorietary rights to use that trademark in Nigeria over you. So it is advisable to register the trademark and avoid yourself further hassles and legal tussles that are totally unecessary and could be easily avoided. Microsoft Nigeria, Dunlop Nigeria, Ariel Nigeria etc all registered their trademarks in Nigeria despite the fact that they are internationally known products and easily recognizable.

8. How long is a trademark valid?:

The trademark is valid for 7 years from the date of application, renewable for further periods of 14 years.

I. When can your Trademark be removed by the Trademark office:

It is necessary to note that a trademark may be taken off the register in any of the following circumstances:

i)non use, on the request of any person concerned, if it can be established that the mark was registered without any bona fide intention to use, and there has in fact been bona fide use of the trademark;

ii) it may be removed for non use during a continuous period of at least five years during which the trademark was registered.

iii)If the entry has been made in the register without sufficient cause.

iv)If an entry remains wrongly on the register

v)Non compliance to the  registrar’s statutory notice to renew by the registered proprietor

9. I am into services and not products, can i still register my services as a Trademark?:

Nope, its no longer called a trademark registeration for services but a Service mark which is being registerable now. A service mark is meant for companies that do not produce or deal with tangible goods but rely mostly on their services as their key products e.g consulting companies, employment agencies, advertising etc

Article written with help from Lawyer: barristermatto@yahoo.com