07 Mar GUIDE TO (PROCEDURE FOR) TRADEMARK OPPOSITION IN NIGERIA
A trademark is a sign capable of distinguishing the goods or services of one business from those of other businesses. It provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment.
Before a trademark can be registered in Nigeria and accorded the statutory right provided by the Trade Marks Act (TMA) Cap T13, Laws of the Federation of Nigeria 2004, it undergoes different stages. These stages of trademark registration must be completed before trademark is properly registered.
The first stage of the registration process commences with the filing of the trademark application which can be done manually or online. Upon filing the application, the Registry issues a document known as an Acknowledgement Notice. This Notice indicates that the trademark has indeed been successfully filed. Upon the Registry’s examination of the trademark in line with the requirements stipulated under the relevant provisions of the TMA, the Registry will then proceed to issue either an Acceptance or Refusal Notice, subject to such amendments, conditions or limitations if any as the Registrar of Trademarks may think right- Section 18(2) of Trademarks Act.
The next stage after issuance of the Acceptance Notice is the Publication stage. In this stage, the trade mark is advertised/published in the journal in order to allow for opposition by the public.
Publication in the Trademarks Journal serves as a notice to the world to challenge the registration of a particular trademark by way of opposition. A trade mark opposition is thus a legal challenge to the right to register a particular trademark. It is a formal objection to the registration of a trade mark. It is usually an administrative procedure in which a party objects or opposes the registration of a trade mark by another. By virtue of Section 20 of the TMA, any interested person could file trade mark opposition within the prescribed time (two months) of the publication of the Trade Marks Journal which contains the trade mark undergoing registration. The opposition proceedings are required to be heard by the Registrar after which a decision is rendered.
Where the trademark is not opposed or the opposition filed against the mark is unsuccessful, the mark proceeds to registration which is the final stage.
GROUNDS FOR TRADEMARK OPPOSITION IN NIGERIA
The grounds for the opposition of a trademark are as provided under Sections 9 (d), 11, 12, 13, and 31 of the TMA. The notable grounds are:
- That the trademark is similar to an already registered trademark
- That the trademark contains names of chemical substance
- That the trademark is deceptive or scandalous
- That the applicant has no intention of using the trademark
- That the trademark contains restricted words
- That the trademark contains geographical names.
PROCEDURE FOR FILING TRADEMARK OPPOSITION IN NIGERIA
The procedure for filing a trademark opposition is set out below:
Notice of Opposition– Sec 20 TMA, Regulation 48 of the Trademarks Regulations
Any person who seeks to oppose a trademark application must do so in writing by filing a Notice of Opposition within two months of the publication of the mark in the Trade mark journal. A Notice of Opposition once filed, prevents the Registry from proceeding with registration of the mark in question until a decision/ruling is delivered in favour of its registration.
In opposition proceedings, the party who files a Notice of Opposition is referred to as the Opponent while the proprietor of the trademark is referred to as the Applicant.
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.
Counterstatement- Sec 20(3); Regulations 50(1)
Upon serving the Applicant with the Notice of the Opposition, the Applicant is expected to file a Counterstatement in response to the Notice of Opposition within One (1) month of receipt. Where the Applicant fails to file the counterstatement, the application will be deemed to be abandoned.
Abandonment- Sec. 20(5); Regulations 52
Abandonment indicates that the Applicant is not interested in defending the opposition hence he is deemed to have abandoned his trademark application. Abandonment can bring an end to an opposition proceeding.
However, where the Applicant files a Counterstatement, the registrar shall send a copy to the Opponent who will be required to file a Statutory Declaration citing evidence in support of the opposition.
Opponent’s Evidence by way of Statutory Declaration- Regulation 53 Trademarks Regulations
Here, the Opponent makes averments on the reasons why the trademark should not proceed to final registration and may furnish documents in support of such claim. The Evidence by way of Statutory Declaration is to be filed within One (1) month of receipt of the Counterstatement from the Applicant
The Applicant, upon receipt of the Opponent’s Statutory Declaration is also required to file its own Evidence by way of Statutory Declaration within One (1) month of receipt of the Opponent’s Statutory Declaration i.e Applicant’s Statutory Declaration.
Reply- Regulation 53
By law, the Opponent further has a right to reply to the Applicant’s Statutory Declaration within One (1) month and where the Applicant needs to respond, it can also file further evidence in response with the leave of the Trademarks Registrar- Regulation 54
Briefs of Argument
Briefs of Argument here means that the opposition proceeding is almost at hearing stage. In preparing the Briefs of Argument, Parties are to canvass arguments whilst relying on statutes and case laws to support their cases.
Note that the filing of Written Addresses is not compulsory as there are no express mandatory provisions to file same under the TMA or Regulations. However, it is advisable to file a written address because in practice, the Trademarks Tribunal tends to rely on the Written addresses in analyzing the weight of either party’s arguments before reaching a decision.
Parties in an opposition proceeding only need to adopt their Briefs of Argument as their respective arguments in support of their case.
The Trademark Tribunal delivers a Ruling after the adoption of the Briefs of Argument. The Ruling seeks to answer the sole issue for determination that is ‘Whether the trademark application should proceed to registration’.
FINALITY OF THE REGISTRAR GENERAL’S DECISION IN TRADEMARK OPPOSITION
The decision of the Trade marks Tribunal is subject to appeal where a Party is dissatisfied with the Ruling of the Trade marks Tribunal- Section 21 TMA
In recent times, the Nigerian Trade mark Registry has recorded a significantly higher number of opposition proceedings. Brand owners are becoming more vigilant in using opposition proceedings in protecting their trade marks. This process has indeed helped to reduce confusion, infringements and counterfeits in the marketplace.
The information provided in this snippet is for general informational purposes only and does not constitute legal advice. If you require specific legal advice on any matters covered in this snippet, please contact firstname.lastname@example.org or email@example.com