21 Jan Protection of Intellectual Property Rights (Part 3)– Trademarks

Trademark is a type of intellectual property which essentially protects the “brand” of a business. The importance of trademark is more prominent in current times as a result of the global and digital nature of businesses. This is especially the case for certain online businesses (with no physical locations) who can only differentiate themselves from competitors by their logos/brands.

What is a Trademark?

Trademark is a mark used in relation to a good/service for the purpose of indicating and distinguishing the source of the good/service. A mark according to the Trademark Act Trade Marks Act, Cap T 13, Laws of the Federation of Nigeria 2004 (“TMA”) includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.

What marks can be registered?

Not every mark can be registered as a trademark, the mark has to be distinctive and capable of distinguishing the particular good/service for which it is being registered.

The mark must contain at least one or more of the following particulars:

• The name of a company, individual, or firm, represented in a special or particular manner;
• The signature of the applicant for registration or some predecessor in his business;
• An invented word or invented words;
• A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
• Any other distinctive mark:

The Nigerian Trademarks, Patent and Designs Registry currently categorise marks which can be registered into 45 Classes. An application for registration has to be made under the relevant class. A mark can also be registered under multiple classes, depending on what the applicants intends for the mark to cover.

The 45 Classes cover not only goods and products but also services (including advertising, business management, telecommunication, logistics, retail etc).  Our article on registration of trademark in Nigeria provides more details on the requirements for registration of a Trademark.

Benefits of Registration

One of the first things businesses/organisations do when they commence business is the creation of their logo/brand/design. The logo/brand/design usually grows with the business and becomes associated with it. It is therefore advised that businesses register their trademarks to fully protect the brand that they have worked strenuously to build.

Registration of a trademark has many benefits, some of which are set out below:

• Creation and Protection of Brand: Registration of a trademark makes it easier for a business to create a brand around a particular trademark and ensure that the brand of the business is adequately protected. When a mark is not registered, using the mark with a business or product does not automatically protect such marks from being registered or used by another business.

• Exclusive Right: The registration of a trademark grants exclusive right over the use of that trademark. The registration of a business at Corporate Affairs Commission does not grant a company exclusive use of the name of the business as a trademark, it only prevents others from registering a business with the same name.

• Property Right: Registration of a trademark creates a property right over the particular trademark, which can be valued separately from the business as long as the trademark remains registered. Companies such as PepsiCo and The Coca Cola Company own brands worth billions of dollars.

• Length of Protection: Trademarks are granted for an initial period of seven (7) years and can be renewed indefinitely.

• Assignment/Licencing: a registered trademark creates a property right over the particular trademark which can be assigned or licenced to a different party. This would useful when a business wants to spinoff a product without necessarily selling the underlying business organisation. A trademark which is not registered cannot be assigned by itself, separate from the business organisation.

• Suing for Infringement: Registration of a trademark in Nigeria grants the registered user the right to bring an action for infringement of a trademark in the Federal High Court. If the trademark is not registered, the user of the trademark cannot sue for infringement, they can only bring an action under the tort of “passing off” which is less reliable.

• Protection from Future Litigation: Registration of a trademark gives public notice that the trademark belongs to the registered user. This prevents a situation where another party seeks to register a mark similar to the mark currently used in your business. It is also evidence that a trademark is owned by the registered user until proven otherwise.

• Registration in Foreign Countries: Having a registered trademark may serve as a good proof of use of a mark in your home country when a business seeks to expand and register its trademark in a foreign country.

Conclusion

The registration of trademarks is an important tool in promoting and protecting a business’s brand. The constantly evolving nature of carrying out business globally and movement into the digital space, demonstrates the importance of businesses registering their trademark to better protect their brand/Image.

Berkeley Legal is able to assist your business in the protection of its brand and the registration of your trademarks.

The information provided in this article is for general informational purposes only and does not constitute legal advice. If you require specific legal advice on any of the matters covered in this article please contact info@berkeleylegal.com.ng