Trademark

Filing Requirements

1. Applicant=s details
The full name(s), nationality and physical address of the applicant (to be advised to local Agent/Attorney).

2. The trade mark
– One clear negative print (i.e. for publications in Trademarks Journal) and bromide copies on durable paper of the trade mark, and if not in plain type, Letters, figures and lines must be clear and distinct.

– A representation may not exceed a total area of 5.5 cm in width and length.

3. Goods
– The full range of goods covered or proposed to be covered by the trade mark.

– Nigeria presently follows the International Classification of Goods.

– A separate application is filed for each classification of goods for which the trade mark is to be registered.

4. Power of Attorney/Authorization of Agent
– A Power of Attorney simply signed, with full particulars of name(s), address(es) and nationality of the applicant(s). Full name(s) and capacity of the signatory when applicant is a firm/company.

– Consular Legalization of any document is not a legal requisite i.e. not necessary.

5. Translation

If the certified copy of the basic application is in a language other than English, a translation with a declaration from the translator is required to be filed with the certified copy of the application.

Also, if the mark contains words in a language other than English, the English translation of words must be filed with the application.

Procedure/Timeline
1. The usual market practice is to instruct a local Attorney/Agent in Nigeria, who would file and process applications at the Nigerian Registry of Trade Marks, Patents, Designs and Copyright.
– A Power of Attorney/Authorization of Agent Form would be completed in favor of such local Agent, as the enabling instrument to act for the principal/ Applicant. Thereafter, all official documents and forms would be submitted by the local Agent/Attorney.
– Until replaced or substituted by another local Agent, the local Agent remains responsible for processing registrations of the marks, defending Oppositions (if any), provides address for local service of documents, and maintains renewals of the marks.

2. A local Agent/Attorney may be replaced or substituted by executing another Power of Attorney/Authorization of Agent Form in favor of the succeeding Agent. NO formal notices are necessary and the Agent with the more recent Authorization is deemed to be the one with powers to act thenceforth.

3. After filing the application for trade mark registration, the Registrar issues an official acknowledgement reflecting the official number and filing date of the application.

4. (a) A preliminary search is conducted as to distinctiveness from existing and pending registrations. The Registrar examines the application for registrability taking into consideration possible conflicts with prior registered or pending marks and or inherent unregistrability of the mark.
(b) If the Registrar finds the trademark acceptable for registration, the applicant will be furnished with a letter/notice of acceptance.

5. Every trade mark application must be advertised in the Nigerian Trademark Journal, and is open to opposition for a period of two (2) months from the date of advertisement.

6. If no objections are received within the specified period or no objections are sustained, the Registrar will issue the applicant with a certificate of registration. When issued, the Registration Certificate will reflect the date of initial filing as date of registration (i.e. date of filing acknowledgement).

7. Nigerian trade mark registrations have an initial validity of seven (7) years, and are thereafter indefinitely renewable for periods of fourteen (14) years. An application for renewal should be made not less than three (3) months from the due date.

8. A trademark may be registered either plainly (black and white) or in colour. However, where a trademark is registered in colour, the protection afforded the Mark is limited to the colour(s) registered. On the other hand, a plain (viz. black and white) registration affords protection to all colours of presentation of the trade mark.

9. Occasionally, the Registrar may request that for distinctiveness and acceptability for registration, word marks that are Common English words be registered in combination with devices or logos.

10. Service Marks Business/Trade Names

Under current Nigerian laws, trademarks are only registrable in relation to goods. Registration of a trademark in relation to services is not directly possible. Whilst a new Trademark Legislation has been drafted which provides for the registration of service trademarks, it has not yet been enacted into law.
In the circumstance, proprietors of service marks endeavor to provide some protection for their trademarks by registering same in International Class 16 (Nigeria adopts the International Classification of goods) which covers PAPER AND PAPER ARTICLES, PRINTED MATTER, STATIONERY etc. which are common mode of marketing A services. The idea being that a proprietor of a trademark who registers same in Class 16 would be in a position to challenge/prevent a subsequent application to register an identical or similar service mark in the same class i.e. the only possible class in which such subsequent trademark may be applied for, under the present Act.
HOWEVER, in appropriate circumstances, additional protection could be assured for a trade mark (being essentially a service mark made up of words and not mere device/logo) by registering it as a Business/Trade Name, in addition to registration as a trade mark under Class 16. In view of current constraints to registrability of service marks, this additional protection comes handy. For example, such service/business/trade name protection could be extended to cover hospitality services such as AHilton@, ASheraton@ etc. etc. Under Nigerian law, a trade name (which is referred to in Nigeria as a Business Name) can be registered separately apart from its registration as a trademark. The proprietor of the registered Business Name is given exclusive right to same and can prevent another person/company/firm from registering a similar or identical Business Name. This is because Section 31(4) of the Companies and Allied Matters Act, 1990 (viz. The Legislation dealing with the registration/ incorporation of Companies in Nigeria) provides that a Company may be required to change its name:

A……. if it is discovered that such a name conflicts with an existing trademark or business name registered in Nigeria prior to the registration of the Company and the consent of the owner of the trade mark or business name was not obtained.

TIME FRAME IN OBTAINING REGISTRATION OF TRADEMARK

1. The letter of acknowledgement and acceptance of the Mark is obtainable by a diligent Agent within 2 – 6 weeks of receipt of instructions from client.

2. Publication of the official Trademarks Journals in Nigeria is irregular and infrequent, and about one (1) Journal a year is commonplace. With the resultant backlog of pending applications for advertisement, the issuance of trademark certificates have been known to take between 2 – 6 years or more. However, for a diligent Agent, the turnaround time in this aspect could range between 1 – 2 years.

3. Once a trademark has been accepted for registration (viz. Letter of Acceptance) it would be given a temporary number, and some measure of protection ensures to the trademark vis-a-vis later applications for the registration of identical or similar trademarks in relation to the same goods or classes of goods.

TIME FRAME IN OBTAINING REGISTRATION OF SERVICE/BUSINESS/TRADE NAME

If the service/business name is not in conflict with any prior registration, the estimated time frame for obtaining Certificate of Registration of Service/Trade/Business Name simpliciter is 2- 6 weeks.

Patent

Summary
General Information

International Agreements : Convention for the Protection of Industrial Property (Lisbon act 1958).

Patent Types : Patents

Novelty Requirements : Applicable

Claiming Priority : Yes – Priority can be claimed, but all documents relating to such claim must be submitted to the Registrar not latter than 3 months form the date of filing.

Examination : Formal Examination only

Protection Period : 20 Years

Publication : Yes

Annuity Payments : Yearly.

Grace period for Payments : 6 (six) months.

Compulsory Licensing : Yes – at any time after the expiration of a period of four years after the filing of a patent application or three years after the grant of a patent, whichever period last expires, a person may apply to the court for the grant of a compulsory licence on one or more of the following grounds:

i)
(a) That the patented invention, capable of being worked in Nigeria, has not been worked;
(b) That the existing degree of working of the patented invention does not meet on reasonable terms the demand for the product;
(c) That the working of the patented invention in Nigeria is being hindered or prevented by the importation of the patented article and (d) That by reason of the refusal of the Patentee to grant licences, on reasonable terms, the establishment or development of industrial or commercial activities in Nigeria is unfairly and substantially prejudiced; or

ii) If an invention protected by a patent in Nigeria cannot be worked without infringing rights derived from a patent granted on an earlier application or benefiting from an earlier foreign priority, a compulsory licence may be granted to the patentee of the later patent to the extent necessary for the working of his invention if the invention serves industrial purposes different from those served by the invention which is the subject of the earlier patent or constitutes substantial technical progress in relation to that last mentioned invention.

The Government under a ministerial authority can also authorise any person to utilize the patent without the authority of the patentee and without liability accruing from the said use.

Opposition to Grant Patents : Not possible – patents may be attacked by nullification suits before the Federal High Court.

Nullification : The court may declare a patent null and void:

1. If the subject is not patentable.

2. The description of the invention does not disclose the relevant invention in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates.

3. If for the same invention a patent has been granted in Nigeria as the result of a prior application or an application benefiting from an earlier foreign priority.

Filing Requirements
Patent Filing Requirements

1. The Applicant’s full name and address.

2. A description of the relevant invention with any appropriate plans or claims.
3. Assignment of invention (where the applicant is not the inventor).
4. Authorisation of Agent.
5. Priority documents where applicable.

Industrial Design


Summary
Procedure/Timeline
Requirements