OPINION
How to file a trademark opposition in Nigeria
A trademark stands as a vital pillar of intellectual property, safeguarding an owner's rights to their goods and services from unjust replication by third parties. Primarily, trademark laws aim to empower businesses by enabling them to register their trademarks, thereby granting exclusive usage rights to the proprietor, preventing others from utilising the same trademarks.
Along with other forms of IP rights, trademark protection is of utmost importance, especially as owners often find themselves in situations where safeguarding their rights against actual or potential infringement becomes necessary.
Trademark oppositions
One of the measures owners can use to protect their interests and rights against potential abuse or misuse is trademark oppositions. This refers to a well-defined administrative procedure in the trademark registry of Nigeria that exists to address such concerns, particularly regarding trademark applications awaiting official registration by the Registry.
In Nigeria, any holder of a trademark can initiate a trademark opposition if they foresee potential harm from the registration of a conflicting mark. This opposition must be lodged within two months of the publication of the application in the trademark journal.
The entity filing the Notice of Opposition assumes the role of the opposer, whereas the entity attempting to register the contested mark is commonly termed the ‘applicant’.
Filing a trademark opposition requires solid grounds or reasons. Below are common reasons for filing a trademark opposition:
Similarity: The trademark closely resembles or is identical to an already registered trademark.
Deception or scandal: The trademark includes deceptive or scandalous elements or designs.
Unauthorised use: The trademark incorporates names of chemical substances, the Coat of Arms of Nigeria, official emblems, or titles like President or Governor without proper authorisation.
Geographical names: The trademark includes geographical names.
Restricted words or symbols: The trademark contains words or symbols that are restricted.
Lack of distinctiveness: The trademark lacks distinctive character.
Lack of intent: The applicant has no intention to use the trademark.
Ownership dispute: The applicant is not the rightful owner entitled to register the trademark.
The Trademark Journal of Nigeria stands as a crucial resource for individuals and businesses navigating the realm of intellectual property. Serving as a comprehensive repository, it offers a platform to search for already published trademarks, ensuring the prevention of unwittingly infringing on existing registrations.
The following requirements are necessary to initiate a trademark opposition:
Duly executed power of attorney: this document is crucial, requiring no notarisation or legalisation.
Applicant/opponent’s details: It's imperative to provide the name, address, and nationality of both the applicant and the opponent.
Trademark information and proof of use: Comprehensive information about the trademark in question is essential, along with evidence of its usage.
Details regarding the opposed mark: Precise details about the trademarks being opposed are necessary for clarity and specificity.
Grounds for opposition: Clear and substantiated grounds for filing the opposition must be outlined to support the legal process.
Section 20 (1) and (2) of the Nigerian Trade Marks Act stipulate the procedure for filing an opposition by writing and upon payment of the prescribed fees. The process for initiating a trademark opposition is outlined as follows:
Upon identifying an infringing mark, the trademark owner (opponent) must submit a notice of opposition within two months of the publication of the infringing mark in the Trademarks Journal.
Upon receipt of the notice, the applicant is required to reply by filing a counterstatement within one month from the date of service. Failure to respond within this period may result in the abandonment of the application.
Following the receipt of the counterstatement, the opponent has one month to provide evidence in the form of a statutory declaration.
Similarly, the applicant is granted one month to submit its own statutory declaration.
Both parties have the opportunity to file a written address in support of their respective claims.
Section 20(5) of the Nigerian Trademarks Act grants the Registrar authority to demand that anyone submitting a notice of opposition or a counter-statement following receipt of such a notice must provide security for the costs of the proceedings concerning the opposition. Failure to provide this security may result in the Registrar treating the opposition or application as abandoned.
Upon completion of these procedural steps, the parties await the scheduling of a hearing and the subsequent delivery of a ruling by the Registry. It's noteworthy that the decision of the Registry can be challenged through an appeal to the Federal High Court.
The Trademark Journal of Nigeria stands as a crucial resource for individuals and businesses navigating the realm of intellectual property. Serving as a comprehensive repository, it offers a platform to search for already published trademarks, ensuring the prevention of unwittingly infringing on existing registrations.
By consulting this journal, stakeholders can proactively safeguard their ventures against potential opposition proceedings by identifying any conflicts with already registered trademarks.
Notably, every trademark facing opposition is duly reflected within the pages of the Trademark Journal, fostering transparency, and facilitating informed decision-making within Nigeria's trademark landscape.
This is a co-published article, which was originally published in the World Intellectual Property Review (WIPR).
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