Hi it’s Ify,
Hope your week has been great?
Today we are focused on Protecting your Trademarks.
How can you or your company protect its trademark(s)?
In Nigeria, Trademark protection can be obtained through registration and through use. Even where trademarks can be protected through use, you are well advised to register the trademark by filing the appropriate application form at the national trademark office.
Registering a trademark will provide stronger protection, particularly in case of conflict with an identical or confusingly similar trademark. For the registration of a trademark, the services of a trademark agent are often very useful.
Is the registration of the trade name of your company sufficient?
Many people believe that by registering their business and its trade name at the Corporate Affairs Commission (CAC), this name would also be automatically protected as a trademark. This is a rather common misconception. It is important to understand the difference between trade names and trade marks.
A trade name is the full name of your business, such as: “Dangote Group of Companies Ltd” and it identifies your company. It often ends with Ltd, PLC. or other similar abbreviations that denote the legal character of the company.
A trademark, however, is the sign that distinguishes the product(s) of your company. A company may have various trademarks. For instance, Dangote Group of Companies Ltd. may sell one of its products as DANSA but another as ZIZA. Companies may use a specific trademark to identify all their products, a particular range of products or one specific type of product. Some companies may also use their trade name or a part of it, as a trademark and should, in that case, register it as a trademark.
Who is authorized to apply for trademark registration? In general, any person who intends to use a trademark or to have it used by third parties can apply for registration. It can be either an individual or a legal entity.
Is it compulsory to register a company’s trademarks?
While it is not compulsory, it is highly advisable, as registration provides exclusive rights to prevent unauthorized use of the trademark. However, in Nigeria the National Agency for Food and Drug Administration Commission (NAFDAC) requires that all food and pharmaceutical products must be registered as trademarks.
What are the main reasons for rejecting an application? While selecting a trademark it is helpful to know which categories of signs are usually not acceptable for registration. Applications for trademark registration are usually rejected on what are commonly referred to as “absolute grounds” in the following cases:
Generic terms: For example, if your company intends to register the trademark CHAIR to sell chairs, the mark would be rejected since “chair” is the generic term for the product.
Descriptive terms: These are words that are usually used in trade to describe the product in question. For example, the mark SWEET is likely to be rejected for marketing chocolates as being descriptive. In fact, it would be considered unfair to give any single chocolate manufacturer exclusivity over the word “sweet” for marketing its products. Similarly, qualitative or laudatory terms such as “RAPID” “BEST” “CLASSIC” or “INNOVATIVE” are likely to give rise to similar objections unless they are part of an otherwise distinctive mark. In such cases, it may be necessary to include a disclaimer clarifying that no exclusivity is sought for that particular part of the mark.
Deceptive trademarks: These are trademarks that are likely to deceive or mislead consumers as to the nature, quality or geographical origin of the product. For example, marketing margarine under a trademark featuring a COW would probably be rejected, as it would be considered misleading for consumers, who are likely to associate the mark with dairy products (i.e. butter).
Marks considered to be contrary to public order or morality: Words and illustrations that are considered to violate commonly- accepted norms of morality and religion are generally not allowed to be registered as trademarks.
Flags, armorial bearings, official hallmarks and emblems of states and international organizations which have been communicated to the International Bureau of WIPO are usually excluded from registration.
Applications are rejected on “relative grounds”
When the trademark conflicts with prior trademark rights. Having two identical (or very similar) trademarks for the same type of product could cause confusion among consumers. Some trademark offices check for conflict with existing marks, including unregistered well-known marks, as a regular part of the registration process, while many others only do so when the trademark is challenged by a third party after publication of the trademark. In either case, if the trademark is considered to be identical or confusingly similar to an existing one for identical or similar products, it will be rejected or cancelled, as the case may be.
It would, therefore, be wise to avoid using trademarks that risk being considered confusingly similar to existing marks.
There you have it, how to protect your trademark, we’ll talk about how to select your trademarks in the next post.
Yours Truly,
Legalipcoach
Disclaimer: The information contained in this guide in not meant as a substitute for professional legal advice. Its purpose is to provide basic information on the subject matter. Have more questions, send me a mail at legalipcoach@gmail.com