STAGES IN REGISTRATION OF TRADEMARKS.
There are basically 3 stages in registration of trademarks in Nigeria. Trademarks registration in Nigeria is governed by the TRADE MARKS ACT, CAP T13, LFN 2003. Registration is done in Registry of Trade Marks, Patents and Designs, under the Commercial Law Department of the Federal Ministry of Commerce and Industry (affiliated to World Intellectual Property Organisation). Legal practitioners and trademarks agents are empowered by the law to act as agents of entities in dealings with the Registry of Trade Marks, Patents and Designs.
- Acknowledgement and Acceptance stage.
Firstly, an entity in need of registration of trademark is expected to make an application for same, attaching its desired trademark to the Registry of Trade Marks, Patents and Designs, under the Commercial Law Department of the Federal Ministry of Commerce and Industry. Note that certain statutory fees must be paid.
- Publication Stage
After an application for registration of trademark has been accepted, the Registrar of Trademarks will cause notice of such application to be published in the Trademark Journal. The publication will set out all conditions, terms and limitations upon which the application had been accepted.
Publication in trademark Journal is a notice to the public (like a marriage ban) calling for protests, opposition and objections to an application for trademark. Any entity who feels that a sought trademark may likely deceive, mislead or confuse the public with regards to existing registered trademarks, has the right to protest to the Registrar of Trademarks. Protests and oppositions must be sent to the Registrar of Trademarks within two (2) months of publication of notice in journal. A notice of opposition/protest must contain reasons (grounds) for protest.
The Registrar of Trademarks will upon receipt of a notice of an opposition to an application for a trademark, send such opposition to the applicant. Such an applicant is expected to respond to the oppositions by sending in a “counter-statement” to the Registrar within one (1) month from the date of receipt of the notice of opposition. A counter statement should contain the grounds showing that the applicant has exclusive right to the registration of the trademark or the proposed trademark is radically different from that of the opposition and will not confuse the public. Where an applicant fails to enter his counter-statement, he will be deemed to have abandoned his application and same will be treated as such.
Where the applicant sends in his counter-statement, the Registrar shall constitute a Tribunal to determine the conflict. The applicant and the complainant (opposition) will appear before the tribunal for hearing and determination of their claims. Whatever by the judgment of the Trademark Tribunal parties can appeal same to the Federal High Court.
- Certification Stage
Certification stage is the final stage in the process of registration of trademarks. Certificate of registration of trademark is a prima facia evidence of the possession of exclusive right to use a particular trademark. A registered trademark appears with the sign; (a circled capital letter “R”) ®.
Where an application for a trademark was not opposed within the time for opposition or it was opposed but resolved in favour of the applicant, the Registrar of Trademarks will issue a certificate of registration to the applicant.
Where an opposition to an application for registration of trademark is resolved against the applicant, the Registrar of Trademarks will send a Letter of Refusal to the applicant.
No entity can claim the registration of a trademark where there is no certificate; hence stopping at any of the preceding stages of registration is not proof of registration. Please note that the publication of application for registration of trademark on the Trademark journal is not a proof of registration or an assurance of same.
Take Notice that a registered trademark is for a period of seven (7) years, but may be renewed from time to time via an application for renewal made to the Registrar. Renewed registration is valid for fourteen (14) years from the date of expiration of the original registration or of the last renewal of the registration.