Trademark opposition in nigeria: A trademark opposition is a legal challenge to the right to register a particular trademark. A trademark may be described as a mark, which is used in the course of trade or business, to identify goods or services from one enterprise and to distinguish them from those of others. According to WIPO, A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
Procedure for Registration of Trademark
Firstly, a preliminary availability search must be carried out to ensure the trademark is not similar to an existing registered trademark. Where the search is successful, then an application can be filed accompanied by clear representation of the marks and the prescribed fees.
If the mark is registrable, the registrar issues an Acceptance Letter and the mark is advertised in the Trademarks journal published by the Trademarks Office. Protests or oppositions containing the grounds upon which the protest is made must be sent to the Registrar of Trademarks within two months of publication of notice in a journal. If there is no opposition, a Certificate of registration is issued.
Who can file Trademark Opposition?
Generally, any interested party could file trademark opposition within the prescribed time of date of publication (two months).
Grounds for Trademark Opposition in Nigeria
The Trademark Act has set out some of the grounds by which an interested party may raise an trademark opposition. Some of the grounds include:
• Where the trademark is similar or identical to an already existing trademark.
• Where the trademark contains a geographical name.
• Where the trademark contains names of chemical substances.
• Where the trademark is deceptive and scandalous.
• Where the trademark contrary to law or morality.
• Where the trademark contains the Nigerian coat of arms or other emblem of authority.
Procedure for filing Trademark Opposition in Nigeria
Section 20 of the Trademarks Act provides that a party who seeks to oppose a trademark application must do so in writing by filing a Notice of Opposition. The Notice of trademark Opposition must be filed along with the ground(s) for opposition within two months of the publication of the mark in the Trademark journal. There is also an opportunity for the applicant to admit to any facts that might have been included in the Notice of opposition.
Where the Registrar has received the notice, he shall notify the applicant within one month of the receipt. The applicant shall respond with a counter statement with the grounds for the application to register the trademark. If the applicant fails to file the counter statement, the application will be deemed to be abandoned.
Following the counter statement, the registrar shall send a copy to the claimant (the person opposing the trademark) who will be required to file a statutory declaration citing evidence in support of the opposition.
On receipt of the statutory declaration by the applicant, he is expected to file his own statutory declaration while providing evidence in support of the application to register the trademark. The person opposing the trademark may then file a reply within one month of receiving the document.
The Registrar may, if the circumstances so require, hear the parties, consider the evidence and decide whether and subject to what conditions, the registration is to be permitted.
Appeal of Trademark Opposition in Nigeria
The decision on the trademark opposition by the registrar is not final as it can be appealed. The Federal High Court has the jurisdiction to hear appeals on trademark matters.
In the case Nabisco Inc. v Allied Biscuits Co. Ltd (1997-2003) 4 IPLR 199, Allied Biscuits had filed an application to register the name ‘Ritz & Device’ in Class 30 which was accepted by the registry. Eight months afterwards, Nabisco Inc. filed an application to register ‘Ritz’ in the same class, which the application was advertised in the journal. Allied Biscuits filed an opposition while Nabisco filed counter statement. Nabisco provided evidence to show that it has used the name outside Nigeria. The registrar however refused the submission. Nabisco appealed to the Federal High Court and the appeal was allowed but at the Court of Appeal, it was set aside and the judgment of the registrar was restored. Nabisco further appealed to the Supreme Court where it was held that Nabisco had not used the mark sufficiently to acquire a reputation for the mark in Nigeria.
In conclusion, a third party can make Trademark Opposition to the Registrar on the above grounds and subject to the provision of the Trademark Act. There is also a right of appeal where the parties involved are not satisfied with the decision of the registrar.
By RESOLUTION LAW FIRM