Author: Margaret Ogbonnah

Introduction

Trademark in modern times has assumed greater significance as a branch of intellectual property law. It guarantees rights over goods and services of a
manufacturer as against unfair imitation by other persons. Put at its simplest, a trademark is some type of sign which distinguishes the product or service of one manufacturer or service provider from another.

Moreso, it is the symbol through which consumers identify and become familiar with a particular product and therefore make repeated purchases. The object of most trademark laws, therefore, is to permit an enterprise by registering its mark to obtain an exclusive right to use its license and assigned mark. It thereby prevents fraudulent practice where nonowners of a registered Trademark copy use such a trademark without the consent and authority of the owner of the trademark or its registered proprietor or licensor of the registered trademark.

Finally, Trademark protection is enforced by the courts, which in most systems have the authority to prevent trademark infringement. This article discusses the Protection and Enforcement of Trademark Rights in Nigeria.

Definition of Trademark?

According to the U.S. Patent and Trademark Office, a trademark is “a word, phrase, symbol or design that identifies your goods and services” and distinguishes your brand from competitors. A trademark is used for goods, while a service mark is used for services. A trademark gives you the exclusive right to use your mark and helps prevent competitors from using a mark that’s the same as or very similar to yours.

Simply using a name, logo or slogan in your business gives it some level of trademark protection, though these “common law” trademarks are hard to enforce and apply only in your immediate locality. You can get state-wide trademark protection by registering your trademark.

Merits of Trademark
Trademarks:
1. Trademark helps every consumer to distinguish between products.
2. Trademark enables companies to differentiate their products.
3. Trademarks are a marketing tool and the basis for building a brand image and reputation.
4. Trademarks are licensed and provide a direct source of revenue through royalties;
5. Trademarks are a crucial component of franchising agreements.
6. Trademarks may be a valuable business asset as it encourages companies to invest in maintaining or improving product quality

Protection of Trademark In Nigeria1

Trademark protection can be obtained through registration and through use. It is pertinent to state that where trademarks can be protected through use, it is safer to register the trademark by filing the appropriate application form at the trademark office. This is because registering a trademark provides stronger protection, particularly in case of conflict with an identical or confusingly similar trademark.

Moreso, it is pertinent to point out that registration of business names, and trade2 names at the Corporate Affairs Commission (CAC), does not provide trademark protection. This is rather a common misconception. However, it is important to understand the difference between trade names and trademarks. A trade name is the full name of the business, which identifies the business and denotes the legal character of the business.

A trademark, however, is the sign that distinguishes the product(s) of the company. It is important to state that a company may have various trademarks or companies may use specific trademarks to identify all their products, a particular range of products, or one specific type of product. Finally, some companies may also use their trade name or a part of it, as a trademark, and register same.

Infringement of Trademark3
Proprietors of registered trademarks have the exclusive right to use their trademarks in connection to the classes of goods and services under which they are registered and the right to claim infringement of their trademarks. Therefore, a person will be deemed to have infringed on a proprietor’s exclusive rights to its trademark where a person (who is not the proprietor of the mark or a registered user), uses a mark identical to the proprietor’s trademark or uses a mark so nearly resembling it as to be likely to deceive or cause confusion in the course of trade.

Moreso, it is important to state that proprietors of unregistered trademarks on the other hand cannot not claim infringement of their trademarks as they are not entitled to the exclusive use of their trademarks. As such the law only entitles them to institute a claim for passing off.

Ways of Enforcing Trademarks4
1. File a Notice of Opposition– The proprietor of a trademark can file a notice of opposition at the Trademarks Registry, challenging the application for the registration of an infringing trademark. The Trademarks Act grants persons the right to file a notice of opposition to the registration of a mark when the
mark is published in the Nigerian Trademark Journal. The purpose of publishing marks submitted for registration before they are finally registered
is to give the public notice of the intention of the Trademarks Registry to register the mark5.

Moreso, persons who are of the opinion that the mark infringes on their trademark have the opportunity to file an opposition within 2 months from
the date of the publication. The notice must be in writing and must contain the grounds for opposition. Upon filing of the opposition, the Trademarks
Registrar (“Registrar”) will send a copy of the notice to the applicant who is entitled to respond to the notice. The Registrar will after hearing the parties
and considering the evidence decide whether the registration will be permitted.

2. Cease and Desist Notification– Proprietors can enforce their rights by sending a cease-and-desist letter to the infringing entity, containing a
description of the trademark that is being infringed and a warning to the infringing party to cease and desist from performing further acts of
infringements.
3. Formal Application for the Cancellation of a registered trademark –  Where the infringing trademark has already been registered, the proprietor of the trademark may make a formal application to the Registrar of Trademarks or to the Federal High Court for the cancellation of the trademark. The application will be required to be supported by evidence of registration of the proprietor’s trademark which should precede the
trademark it seeks to cancel.

4. Institution of a civil action for trademark infringement – A proprietor is entitled by the Trademarks Act to institute an action against the infringing
entity for infringement of his trademark. Upon institution of an action, the burden of proof rests on the proprietor to prove infringement on his
trademark. Remedies available to the proprietor under this action includes: damages; injunctive reliefs; an order of the court compelling the infringing
party to give account and pay to the proprietor the profits from the infringement; delivery up or destruction of infringing goods or products, etc.
5. Formal Application to Relevant Government Agencies– Agencies such as the Corporate Affairs Commission and the Nigeria Internet Registration Association prohibit the registration of a name either as a company, partnership or a domain name which violates an existing registered trademark/domain name unless the consent of the owner has been obtained.
The proprietor can therefore make a formal application to these agencies seeking the withdrawal or cancellation of the name on the basis of infringement.

Conclusion

Trademarks are unique marks or a combination of marks used to distinguish the goods or services offered by a business. Trademarks of successful businesses are often subject to infringement by competitors attempting to exploit their good will.

It is therefore important for businesses to take necessary steps to protect their trademark and enforce them when the need arises.

The options highlighted above are not mutually exclusive and an aggrieved proprietor may decide to pursue one or more of the options listed above. It is
recommended that the proprietor considers all possible avenues to enforce its trademark and prevent continued or further infringement before commencing legal action so as to save time and reduce the costs involved in litigation. Overall, it is important that all steps taken in relation to the enforcement of a trademark be taken immediately infringement occurs to prevent further damage to the business of the proprietor.

References

1. Section 3 of Trademark Act 2004, LFN.
2. Section 4 of Trademark Act 2004, LFN.
3. Section 5 of Trademark Act 2004, LFN.
4. https://seahipaj.org/journals-ci/dec-2016/IJILPS/full/IJILPS-D-2-2016.pdf 
5. https://www.wipo.int/export/sites/www/sme/en/documents/guides/customization/making_a_mark_nig.pdf
6. http://repository.pgcollegeui.com:8080/xmlui/bitstream/handle/123456789/848/byron.pdf?sequence=1&isAllowed=y 
7. https://www.aelex.com/wp-content/uploads/2021/06/GUIDEBOOK-ON-INTELLECTUAL-PROPERTY-IN-NIGERIA-.pdf

DISCLAIMER
This article is for information purpose, it may, or may not reflect the current position of the law and is therefore not intended to provide legal advice or guidance on litigation or provide commentary on any pending case or legislation.

1 Section 13 of Trademarks 2004 Act, LFN.
2 ection 3 of Trademarks 2004 Act, LFN.
3 Section 5 (2) of Trademarks Act 2004, LFN

4 Section 20 of Trademarks Act 2004, LFN.
5 Section 19 of Trademarks Act, LFN.