TOWARDS TRADEMARK LAW REFORM IN
NIGERIA: A PRACTITIONER’S NOTE
By
Mark Mordi
Introduction
Trademark
is a major platform or format by which
product owners project into streams of commerce, goods
and service.1 It serves important functions of origin,
differentiation, guarantee of quality and advertising for the
particular products. This in turn creates distinctiveness of
and goodwill for their products and services through
personal names, designs, letters, numerals, logos, brands,
mark or shape of goods or their packaging which the mark
is affixed to.2
This article shall discuss the provisions of the Nigerian
Trade Marks Act of 1965, now part of the compilation in
Cap T13 of the Laws of Federation of Nigeria, 2004. In
discussing the provisions of the Act, the paper shall
identify a number of challenges or problems encountered
in the implementation of the provisions of the Act from a
practitioner’s point of view and the shortcomings of the
Act when compared with the current trend in legal regimes
for trademark registration internationally and within the
Africa region.

.
1.
2.
Litigation Partner, Aluko and Oyebode, Barristers Solicitors and
Trademark Agents.
Cornish, E.R.: Intellectual Property: Patents, Copyright, Trade Marks and
Allied Rights, Fourth Edition (London: Sweet & Maxwell, 1999) p 597
paragraphs 1501 – 1502.
See footnote 2 above.
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The article shall in this regard, consider current trends
in legal regimes for trademark registration in Sub-Saharan
Africa as benchmarks for comparison with the Nigerian
position. The examples of Ghana and South Africa readily
come to mind. In this respect, the article shall highlight and
analyze salient provisions of the Trade Marks Act of
Ghana, 20043 and the Trade Marks Act of South Africa,
1993,4 which are worth emulating by Nigeria. Thereafter,
recommendations on how to tackle the problems identified
in the Nigerian Trade Marks Act from a practical point of
view will be provided, while making a compelling case for
the review of the Act.
Definition and Importance of Trademarks in the
Modern Economy
It is widely recognized that trademarks are indicators of
origin.5 In the case of Hanover Star Milling Co. vs. Metcalf,6
the US Supreme Court articulated what has been referred
to as the primary and proper function of trademark as “to
identify the origin or ownership of goods to which it is
affixed”.7 Peter Groves, in his treatise, Intellectual Property
Law, notes that the contemporary function of trademark
goes beyond only identifying the origin and ownership of
3.
4.
5.
6.
7.
Act 664 of 2004.
(No. 194) of 1993 (as amended by the Intellectual Property Laws
Amendment Act No. 38 of 1997).
See David Kitchin, & Others: Kelly’s Law of Trade Marks and Trade
Names, (London: Sweet and Maxwell, 2005), p 9; Peter J. Groves:
Intellectual Property Law, (London: Cavendish Publishing Limited, 1997),
512; Cornish and Llewelyn: Intellectual Property, Patents, Copyright, Trade
Marksand Allied Rights, (London; Sweet and Maxwell. 2003) p 652;
Hanover Star Milling Co. v. Metcalf, 240 US 403, 412 (1916).
(supra).
See Groves, ibid.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
195
the good on which it is used. This, according to him, is
because the ramifications of modern trade and the transborder distribution of goods from the manufacturer
through the importer and the retailer to the consumer blur
the origin of even a well known trademark from the
knowledge of the consumer.8 In his words: “the true
functions of the trademark are, then, to identify a product
as satisfactory and thereby to stimulate further purchases
by the consuming public”.9 The foregoing references
mainly define trademark in terms of its functions. A more
encompassing definition is provided in the Nigerian Trade
Marks Act.10 According to section 67 of the Act:
Trademark means, except in relation to a
certification trade mark, a mark used or
proposed to be used in relation to goods for
the purpose of indicating, or so as to
indicate, a connection in the course of trade
between the goods, and some person having
the right either as proprietor or as registered
8.
Groves, ibid, pp 512-513. See also Adewopo & Oguamanam: The
Nigerian Trademark Regime and the Challenges of Economic Development”
(1999) 11c 30, No. 6/1999, 632-653.
9. Groves, ibid, p 515.
10. See section 67 of the Trade Marks Act, Cap T 13, Laws of Federation
of Nigeria (LFN), 2004. Section 43 (1) of the Act provides that “a
mark adapted in relation to any goods to distinguish in the course of
trade goods certified by any person in respect of origin, material,
method of manufacture, quality, accuracy or other characteristic, from
goods not so certified, shall be registrable as a certification trade mark
in Part A of the register in respect of those goods in the name, as
proprietor thereof, of that person: provided that a mark shall not be
so registrable in the name of a person who carries on a trade in goods
of the kind certified.”
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user to use the mark, whether with or
without any indication of the identity of that
person, and means, in relation to a
certification trademark, a mark registered or
deemed to have been registered under
section 43 of this Act.
From the definition provided in the Nigerian Act, it
does appear that the use of the word trademark under
Nigerian law is restrictive in that it may only be affixed to
goods traded by a proprietor. There however seems to be a
departure from this in the United Kingdom whose 1938
Trade Mark Act the Nigerian Trade Marks Act is modeled
after, by the inclusion of “service” as an additional vehicle
upon which a trademark may be affixed aside from ‘goods’.
Section 1 of the United Kingdom Trade Marks Act, 1994,
provides that trademark is “any sign capable of being
represented graphically which is capable of distinguishing
goods or services of one undertaking from those of other
undertakings”. It further states: “A trademark may, in
particular, consist of words (including personal names),
designs, letters, numerals or the shape of goods or their
packaging.”11 The non-inclusion of services as covered in
the definition of trademark is clearly one of the
shortcomings of the Nigerian Act that will be highlighted
in this article.
Trademark is no doubt important both to the
proprietors and the public. This is evident in the stated
11. See also section 2 (1) of the South African Trade Marks Act (No. 194)
of 1993 and section 1 of the Ghanaian Trade Marks Act of 2004
wherein “services” are expressly stated in the definition of a
trademark.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
197
rational for the evolution of trademark that it originated as
“a police measure to prevent ‘the grievous deceit of the
people’ by the sale of defective goods, and to safeguard the
collective goodwill and monopoly of the guild.”12 The
concept of trademarks further benefits the public by
lowering the cost on consumers to search for quality
products.13 These functions and benefits make the law of
trademark a very important instrument to any nation and
the utility of the law rests on how effectively the objectives
are actualized in a modern society. The next section
therefore focuses on the weaknesses of the Nigerian Trade
Marks Act.
Nigerian Trademarks Act 1965
The focus on the Nigerian Trade Marks Act of 1965 is
specifically intended to identify and accentuate the
problems inherent in the regime of trademark registration
with emphasis on certain provisions of the Act. The
problematic instances include the following areas which
would be discussed accordingly:
(i) Part A and B Registration Dichotomy;
(ii) Outdated Classification of Goods and Services
within the Trademarks Act;
(iii) Arguments on the propriety of the exercise of the
Minister’s power of expansion;
(iv) Priority claims and domestication of international
trademark treaties;
12. See Groves, op cit, n 4, p 516, citing Schechter, “The Historical
Foundations of the Law Relating to Trademarks”, (1925).
13. Groves, ibid, p 530.
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(v) Common searches of Trademarks and Trade
names (Need for a mutual databank for the
Trademark Registry and the Corporate Affairs
Commission);
(vi) Absence of provision within the Act/Regulation
regarding an extension of time to do an act under
the Act/Regulation.
Part A and B Registration Dichotomy
The Trade Marks Act provides that a record to be called
the register of trademarks shall continue to be kept by the
Registrar of Trademarks.14 By virtue of section 2 (1), the
register shall contain an entry of all registered trademarks
with the names and addresses of their proprietors, the date
on which applications were made for their registration,
notification of assignments and transmissions, the names
and addresses of all registered users and such matters
relating to registered trademarks as may be prescribed.15
The Trademarks Register is divided into two parts namely;
Part A and Part B and is open to “the inspection of the
public subject to such rules as may be prescribed”.16 The
question which arises therefore is how clear or distinct is
the difference between the requirements of Part A and
those of Part B?
Sections 5 and 6 of the Trade Marks Act provide for
the rights given by registration in Part A and Part B
respectively. A joint reading of sections 5 (1) and 6 (1), are
14. See section 2 (1) of the Nigerian Trade Marks Act.
15. By virtue of section 2 (2) of the Act, the register shall be kept under
the control and management of the Registrar of Trademarks at the
Registrar’s office.
16. See section 2 (3) – (4), ibid.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
199
to the effect that registration of a trademark under any of
the parts “shall, if valid, give or be deemed to have given to
the proprietor the exclusive right to the use of that trade
mark in relation to the marked goods”.17 Section 6 (1) in
fact gives the proprietor of a trademark in Part B “right in
relation to those goods as if the registration had been in
Part A of the register, and section 5 (2) to (4) of the Act
shall apply in relation to a trademark registered in Part B
accordingly”. The only difference in terms of effect of
registration in Part B of the register appears to be provided
under section 6 (2) of the Act in an action for
infringement.18
This article advocates as a first step in law reform that
the artificial dichotomy created between Part A and Part B
of the Act relating to trade mark registration be scrapped
for a number of reasons. Firstly, the distinction between
registration under Part A and Part B is entirely unclear and
in actual fact there appears to be little or no difference
between registration by virtue of Part A on the one hand
and Part B on the other hand. It has been argued that a
mark which is ‘capable of distinguishing’ should in theory
be one which could become distinctive.19 It thus appears
that when the proprietor of a Part B registration can prove
17. Section 5(1).
18. Section 6 (2) provides thus: “In any action for infringement of the
right to the use of a trade mark given by such registration as aforesaid
in Part B of the register, no injunction or other relief shall be granted
to the plaintiff if the defendant establishes to the satisfaction of the
court that the use of which the plaintiff complains is not likely to
deceive or cause confusion or to lead to the belief in a connection in
the course of trade between the goods and some person entitled either
as proprietor or as a registered user to use the trade mark”.
19. See UK Trade Mark Handbook, paragraph 5.1.8 at page 5/11.
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that the mark has through use become distinctive, it should
qualify for acceptance in Part A without question.20
Secondly, Part A and Part B registrations have similar
characteristics. For instance, section 9 of the Act is
concerned with the pre-requisite of distinctiveness for
registration while section 10 is concerned with the
requirement of “capability of distinguishing” for
registration under Part A and Part B, respectively.
Furthermore, both parts require marks to have an inherent
capacity to be distinctive or distinguishable for
registrations, and both parts also require use in the course
of trade as a relevant factor in determining whether a
trademark is capable of distinguishing.21 Although in a
number of decided authorities on the issue of
distinctiveness, registration of trademark in Part A is
allowed,22 there seem not to be any judicial authority - at
least in Nigeria - positing on the difference between
registration under Part A and registration under Part B.
Thirdly, the difference between the two types of
registration seems blurred in practice. As a matter of
20. See Weldmesh TM [1966] RPC 220.
21. See sections 9 (3) and 10 (2) of the Nigerian Trade Marks Act. See
Adebambo Adewopo: ‘Registrability of Trademarks in Nigeria:
Proposal for Law Reform,’ Nigerian Current Law Review 1997, 77.
22. See Yorkshire Copper Works Application (1954) 1 All ER 570 wherein
their Lordship at the House of Lords considered the requirement for
registration in Part A. Their lordship defined the “inherent
adaptability” of a trademark to mean; “to distinguish the goods of A
when you can predicate of it that it is such a name as it would never
occur to B to use in respect of his similar goods.” They opined further
(per Lord Simonds) that “where the inherent unsuitability is so strong
that no degree of distinctiveness can counterbalance it, the mark will
not be registered”.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
201
practice, there appears to be no registration applied for or
effected under Part B at the trademarks registry.
Finally, by reason of trademark reform in the United
Kingdom, the Part A and Part B registrations which were
features of the 1938 Act23 from which the Nigerian Act
generously borrowed have been scrapped.24 Therefore,
there is no logical basis for continuing with this twin track
registration system which is clearly anachronistic and
largely ignored in practice.
Antiquated Classification of Goods and Services
within the Trademarks Act
The classification of goods within the Nigerian Trade
Marks Act mainly seeks to differentiate specific goods in
relation to which a trademark application is filed or
proposed to be filed since a trademark is concerned with
the use of a device, or name applied to goods and services
in the course of or in relation to a trade.
An examination of the Act reveals that it has not
incorporated in its provisions and classification, the
registration and protection of trademarks in relation to
services. Firstly, the definition of trademark in section 61
of the Act, excludes “services” contrary to other legislation
like the United Kingdom’s Trade Marks Act,25 Ghana’s
Trade Marks Act and South Africa’s Trade Marks Act.26
This gap in the law presents major challenges for service
23. See Articles 1-10 of the 1938 United Kingdom’s Trademark Act,
1994, which bears great similarities with sections 2-10 of the Nigerian
Trade Marks Act.
24. United Kingdom’s Trade Marks Act of 1994.
25. Section 1(1), United Kingdom’s Trade Mark Act, ibid.
26. See Article 2 (xxiv) of the South African Trade Mark Act, 1997.
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providers who run the risk of no protection for their marks
and branding devices.27
Although in practice, trademark practitioners use the
classification stated in the Fourth Schedule of the Act
either in relation to goods only or revert to the Nice
Classification of Goods and Services,28 in view of the fact
that the Fourth Schedule to the Trade Marks Regulation
restricts applications for registration of trademark to 34
classes of goods, there is a potential legal argument that
trademark registration for services is not allowed under
Nigerian law; thus requiring a review of the Trade Marks
Act and Regulations in this particular regard. A review
along this line will bring the law in line with the position in
other countries as indicated above and in line with
international standard.29
27. In practice Nigerian practitioners for a long while relied on
registrations under Class 16 to provide some protection for mark
owners.
28. See Nice Agreement Concerning the International Classification of
Goods and Services for the Purpose of Registration of Marks, of June
15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on
May 13, 1977 (Geneva, 13 May 1977). Entry into force for Australia: 6
February 1979, available at: http://www.wipo.int/classifications/ nivilo/nice
/index. htm?lang=EN#, [hereinafter: the Nice Agreement].
29. See Article 15 (1) and (4) of the Trade Related Aspects of Intellectual
Property (TRIPS), Apr. 15, 1994, Marrakesh Agreement Establishing
the World Trade Organization, Annex 1C, The Legal Texts: The
Results of the Uruguay Round of Multilateral Trade Negotiations 320
(1999), 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994), available at:
http://www.wto.org/english/tratop_e/trips_e/t_agm3_e.htm#2 (accessed on
15 August, 2011). Article 15 (1) includes services under the
protectable subject matter of Trademarks law.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
203
Arguments on the Propriety of the Exercise of the
Minister’s Power of expansion of the Classification to
include Service Marks
In order to cover the gap in the law resulting from the
non-inclusion of services as subject matters of trademarks,
on 19th April, 2007, the Honourable Minister for
Commerce and Industry ostensibly exercised his powers
under sections 4230 and 4531 of the Nigerian Trade Marks
30. Section 42 (1) provides that “the minister may make such regulations
and prescribe such forms as he thinks expedient, for empowering the
Registrar to amend the register, whether by making or striking or
varying entries therein, so far as may be requisite for the purpose of
adapting the designation therein of the goods or classes of goods in
respect of which traded marks are registered to any amended or
substituted classification that may be prescribed. See also the Nice
Agreement, op cit, n 27.
31. Section 45 (1) of the Act provides that:
“the minister may make regulations:
(a) For regulating the practice under this Act, including the service of
document;
(b) For classifying goods for the purposes of registration of
trademarks;
(c) For making or requiring duplicates of trademarks and other
documents;
(d) For securing and regulating the publishing and selling or
distributing, in such manner as the Minister thinks fit, of copies of
trademarks and other documents;
(e) For prescribing the fees to be paid in respect of applications,
registrations and other matters under this Act;
(f) For prescribing anything required or authorized by this Act to be
prescribed by this Act to be prescribed by regulations;
(g) For extending the time limited by this Act for the performance of
any act, whether generally or in particular cases and whether at the
discretion of the Registrar or otherwise;
(h) For imposing restrictions as regards the registration under this Act
of the arms, flags, emblems, titles or other distinctive marks of any
country or international organization;
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Act by issuing a regulation (the “Regulation”) expanding
the classification under the Fourth Schedule of the Trade
Marks Regulations covering 34 classes of goods to include
service marks “according to the manner and structure” of
the Nice Classification.32 This regulatory intervention
sought to bring Nigeria in conformity with the Nice
Classification and as a result, proprietors may now file
applications for registration of trademarks in respect of
services under Classes 35 – 42. It is however important to
note that at the relevant time, the Registrar of Trademarks
while accepting applications for registration of service
marks placed a caveat, namely that such applications will
not be advertised, in spite of the importance of same (since
(i) Generally, for regulating the business of the office of the Registrar
and all things by this Act placed under the direction or control of
the Registrar or the Minister.
Section 45 (2) of the Act provides that the “Regulations under this
section shall not have effect until published in the Federal Gazette.
The emphasis is on sub-section (b).
32. The Nice Agreement establishes a classification of goods and services
for the purposes of registering trademarks and services marks (called
the Nice Classification, the current one being the 9th edition which
entered into force on 1st January, 2007). The Classification consists of
a list of classes including 34 classes for goods and 11 for services and
an alphabetical list of goods and services comprising of about 11,600
items. Both lists are amended and supplemented periodically by a
Committee of Experts on which all contracting States are represented.
There are 83 countries who are party to the Nice Agreement (Nigeria
is not a member) however, the trademark offices of at least 147 States,
as well as the International Bureau of WIPO, the African Intellectual
Property Organization (OAPI), the African Regional Intellectual
Property Organization (ARIPO), the Benelux Organization for
Intellectual Property (BOIP) and the Office for Harmonization in the
Internal Market (Trademarks and Designs) (OHIM) of the European
Communities uses the Nice Classification. See for further details:
http://www.wipo.int/treaties/en/classification/nice/summary_nice.html,
(accessed on 15 August 2011).
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
205
advertisement is one of the preconditions for registration)
until relevant legislation is enacted.33
The validity of the regulatory intervention by the
Minister under sections 42 (1) and 45 (1) of the Trade
Marks Act to extend the classification under the Fourth
Schedule to services (which now allows proprietors and
businessmen to file application for registration of service
marks) appears to be in question and rightly so as this
paper will show.
The validity of the regulations is open to attack
primarily on the basis of the proposition ‘that the Minister
cannot as a matter of law make such regulation’. One
school of thought34 has argued that by virtue of the
provisions of sections 42 (1) and 45 (1) (b), the powers of
the Minister to make a regulation regarding classification is
limited to ‘‘goods’’ as provided in the Fourth Schedule to
the Trade Marks Regulation. The argument goes further to
posit that the definition of “trademark” under the Act also
limits the coverage of the Act to “goods” and that “goods”
are clearly different and exclusive of “service”. The
argument concludes that to the extent that the Act
expressly confers the entitlement to a trademark and their
classification in relation to goods, the regulation made by
the Minister was done ultra vires and therefore the new
classification to include services is invalid.
Another school of thought seeks to raise a
counterpoint in support of the Minister’s regulatory
intervention. The argument here is that the definition of
33. See online article titled: “Jumping the Gun on Service Marks”, (author
unknown). http://www.chrisogunbanjo.com/files/Jumping _the_Gun_on_
Service_Marks.pdf (accessed on 15 August 2011).
34. Ibid.
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goods under the Act should bear a liberal interpretation
and should not be restricted to tangible goods. The
hypothesis goes on to posit that, intangible goods
transacted in the course of trade could sometimes be
conceptualized to include services; therefore, service marks
ought to be allowed registration under the Nigerian
trademark regime. While the argument is clearly
imaginative, the provisions of the Act are clear on the
point that classification in respect of trademarks is limited
to goods and does not include services.35 The exercise of
powers by the Minister therefore seems to be ultra vires
since it is the sole responsibility of the National Assembly
to amend the legislation in compliance with the legislative
process recognized by the constitution.36Nevertheless,
from a practical standpoint, registration for a brand owner
is at least prima facie evidence of priority which should be
utilized.
35. As a general proposition when construing legislative intent, Nigerian
Courts will, as a rule, apply a literal interpretation to the words found
in the statute when they are unambiguous. It can therefore be
hypothesised that were the issue to be tested before Nigerian courts, a
restrictive interpretation would be applied and “goods” as used in the
Trade Marks Act, would be construed as meaning goods restrictively
and not inclusive of services. See Awuse v. Odili [2003] 18NWLR Part
851, 116 at Ratio 12.
36. See also Proshare Article, Legal Alert for May 2010: “Trade Names
and
Trade
Marks
Protection
in
Nigeria”,
www.proshareng.com/articles/2093 (accessed on 15 August 2011).Section
4 of the 1999 Constitution of the Federal Republic of Nigeria confers
legislative powers on the National and State Houses of Assembly;
Also in Phoenix Motors Ltd v. N.P.F.M.B [1993] 1 NWLR Part 272,
page 718 at 728, and Ugwuanyi v. NICON Insurance Plc [2004] 15
NWLR part 897, page 612 at 633,where the proposition the
devolution of legislative powers was recognized by Nigerian Courts.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
207
Priority Claims and Domestication of International
Trademark Treaties
Under section 44 of the Act, any person who has applied
for protection for any trademark in a Convention country,
or his legal representative or assignee, shall be entitled to
registration of his trademark under the Act in priority to
other applicants; and the registration shall have the same
date as the date of the application in the Convention
country. In order for the trademark filed in a Convention
country to enjoy the priority claim, the following
conditions must be fulfilled:
(a) The application must be made within six months
from the application in the Convention country; and
(b) The proprietor of the Convention trademark shall
not recover damages for infringements happening
prior to the actual date on which his trademark is
registered in Nigeria.37
Section 44 (4) provides the criteria or circumstances
for deeming an application as having been made in
accordance with a Convention country. The section
provides as follows:
(4) Where a person has applied for protection for
any trade mark by an application which (a) In accordance with the terms of a treaty
subsisting between any two or more
Convention countries, is equivalent to an
application duly made in any one of those
Convention countries; or
37
See the proviso to section 44 of the Nigerian Trade Marks Act.
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(b) In accordance with the law of any Convention
country, is equivalent to an application duly
made in that Convention country; he shall be
deemed for the purposes of this section to
have applied in that Convention country.38
Going by the definition of Convention country in
section 45(5), it implies that before a country can be
regarded as a Convention country, the President must first
make a declaration in that regard.39 There is however no
known Presidential declaration providing for reciprocity of
trade mark applications with any country under the terms
set forth in Section 44 in the Act.
By virtue of Articles 2 and 3 of the Paris Convention
for the Protection of Industrial Property 1883,40 juristic
38. See section 45 (5) of the Act which defines “Convention Country” to
mean “a country in the case of which there is for the time being in
force a declaration made by the President, with a view to the
fulfilment of a treaty, convention, arrangement or engagement,
declaring that that country is a Convention country; provided that a
declaration may be made as aforesaid for the purposes either of all or
of some (but not all) of the provisions of this Act, and a country in
the case of which a declaration made for the purpose of some (but
not all) of the provisions of this Act is in force shall be deemed to be
a Convention country for the purposes of those provisions only.”
39. See section 45 (6) which provides that “a declaration made under this
section shall not have effect until published in the Federal Gazette”.
40. March 20, 1993; effective July 7, 1884, and amended June 2, 1934 and
July 14, 1967), available at: http://www.wipo.int/treaties/en/ ip/
paris/trtdocs_wo020.html (assessed on 12 September 2011). The Paris
Convention for the Protection of Industrial Property was signed in
Paris, France on 20 March 1883 as one of the first intellectual
property treaties. The treaty was signed after a diplomatic conference
by 11 countries: Belgium, Brazil, France, Guatemala, Italy, the
Netherlands, Portugal, El Salvador, Serbia, Spain and Switzerland. The
Treaty was revised at Brussels, Belgium on 14 December 1900, at
Washington, United States on 2 June 1911, at The Hague,
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
209
and natural persons who are either national of or domiciled
in a State Party to the Convention, shall, as regards the
protection of industrial property, enjoy in all the other
countries of the Union, the advantages that their respective
laws grant to nationals. This is called the principle of
national treatment.41 Also by Article 4 of the
Convention,42 an applicant from a contracting State shall
Netherlands on 6 November 1925, at London, United Kingdom on 2
June 1934, at Lisbon, Portugal on 31 October 1958 and at Stockholm,
Sweden on 14 July 1967 and amended on 28 September 1979.
Presently, there are about 173 contracting Member Countries for the
Treaty which makes it one of the most widely adopted Treaties
worldwide. Nigeria is a member country of the Paris Convention for
the Protection of Industrial Property.
41. See Wikipedia; “Paris Convention for the Protection of Industrial
Property”; en.wikipedia.org/wiki/Paris_Convention_for_the_ Protection
_of_Industrial_Property (accessed on 15 August 2011). Please note that
the principle of national treatment is also recognised by other
intellectual property treaties including but not limited to the Berne
Convention on the Protection of Copyright 1886, S. Treaty Doc. No.
99-27, 828 U.N.T.S. 221 and the TRIPS Agreement.
42. Article 4 A (1) provides that “any person who has duly filed an
application for a patent, or for the registration of a utility model, or of
an industrial design, or of a trademark, in one of the countries of the
Union, or his successor in title, shall enjoy, for the purpose of filing in
the other countries, a right of priority during the periods hereinafter
fixed.” Article 4 B provides that “consequently, any subsequent filing
in any of the other countries of the Union before the expiration of the
periods referred to above shall not be invalidated by reason of any
acts accomplished in the interval, in particular, another filing, the
publication or exploitation of the invention, the putting on sale of
copies of the design, or the use of the mark, and such acts cannot give
rise to any third-party right or any right of personal possession. See
also Article 2 Paragraph 1 of the TRIPS Agreement which, in
conjunction with the Paris Convention, provides a “derived”
convention priority right. As a result, WTO members need not ratify
the Paris Convention but should however comply with Articles 1 to
12 and Article 19 of the Paris Convention.
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be able to use its first filing date in one of the contracting
States as the effective filing date in another contracting
State, provided that the applicant files another application
within 6 months (for industrial designs and trademarks) or
12 months (for patents and utility models) from the first
filing.
The relevant concern here is the fact that, although
Nigeria is signatory to the Paris Convention on Protection
of Industrial Property, the requirement for the operation of
the Convention under the Nigerian Trade Marks Act is yet
to be complied with.43
For the provisions regarding priority and reciprocity
under the Act to take effect, a Presidential declaration
would have to be made and the Paris Convention would
have to be domesticated or enacted as municipal law in
Nigeria. The advantages of such an action for international
brand owners in a globalised market would be enormous.
It would guarantee certainty of protection, confidence in
the ability of the Nigerian legal system to protect
trademark owners; protection of well-known marks as a
matter of course, and more. The critical questions required
to be addressed in order to secure to Nigeria this position
of comparative advantage are: (1) whether there is any
political will to effect such domestication of the Paris
convention; and (2) whether there is a champion for this
cause at this time? Unfortunately, these two questions can
only be answered in the negative at this time.
43. See section 45 (5) on the proviso on the application of the Treaty
pursuant upon the declaration by the President.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
211
Absence of provision within the Act / Regulation
regarding an extension of time to do an act under the
Act and the Regulation
By virtue of section 45 (1) (g) of the Trade Marks Act, the
Minister charged with the responsibility for trademarks has
the powers to make regulations for extending the time
limited by the Act, whether generally or in particular cases
and whether at the discretion of the Registrar or otherwise.
On the surface, it may appear that the Minister, on the
strength of this section, has the power to extend time
within which to do an act setting forth a Regulation that
would confer on the Trade Marks Registrar the power to
extend time for all purposes.
However, this author is of the view when this section
is viewed side by side with the relevant Regulation44 for
extension of time, the regulation in its present form, does
not support orders of extension of time for completing an
act or acts or duties under the Trade Marks Act. The
wording of Regulation 104 of the Trade Marks
Regulations45 confers on the Trademark Registrar the
power to extend time in the following terms inter alia:
‘for doing any act or proceeding under these
regulations not being a time expressly
provided for in the act
The limited scope of Regulation 104 therefore means
that the power to extend time only applies to acts
44. Regulation 104 Trade Mark Regulations 1967 Cap 436 Laws of the
Federation 1990.
45. Trade Marks Regulations 1967Cap 436 Laws of the Federation
1990.
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prescribed in the regulations; extension of time for acts
prescribed by the Trade Marks Act itself appears to be
excluded. In theory, a failure to file an opposition to a
prospective mark that is confusingly similar with say a wellknown mark within the period of two months as provided
by the Statute46would mean that the right of opposition
would be lost and a confusingly similar mark may end up
getting registered.
To correct this anomaly, there is need for clear
provisions in the Trade Marks Act or the Regulations
(which the Minister has power to make)47 specifically
conferring on the Registrar and the Courts, the power to
extend the time for doing anything under the Act or under
the regulations.
Comparison between the South African Trademarks
Act, the Ghana Trademarks Act and the Nigerian
Trademarks Act 1965
Definition of
Registration
“Mark”
and
Specification
for
Under the Nigerian Trade Marks Act, a mark is defined to
include “a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, or any combination
thereof”. The Nigerian Trade Marks Act therefore clearly
indicates that the registration of a trademark must be in
respect of particular goods.48 As earlier noted, based on
modern trends, this definition appears restrictive as it rules
46. Governor of Oyo State v. Folayan (1995) 8NWLR Part 411, page 292 ratio
9.
47. Section 45(1) Trade Marks Act.
48. Section 4 Trade Marks Act 1965.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
213
out service marks and uniquely shaped containers or
designs. It limits the registration of trademarks to goods,
while services are excluded. Although the Minister,
exercising his powers under Section 42 (1) of the Act, has
extended the classification of goods to adopt the Nice
classification, thereby including services, this matter is still
under dispute in some quarters as discussed above.
The definition of trademark is also unduly restrictive in
that a “container for goods” may only be registered in
Nigeria as a design, under the Patents and Designs Act.
This paper holds the view that even though a creation may
actually be a design, that should not stop it from also being
registered on a parallel track as a trademark if it is in fact
peculiar to a particular proprietor and used to distinguish
either its goods or services or both in the course of
business from those of others, which is the purpose of a
trademarks.49
In contradistinction, the South African Trade Marks
Act is more expansive on the definition of a trademark.
The Act defines a mark as follows: “… any sign capable of
being represented graphically, including a device, name,
signature, word, letter, numeral, shape, configuration,
pattern, ornamentation, colour or container for goods or
any combination of the aforementioned”. Provision is
therefore made for the registration of both goods and
services. It is clearly stated that the registration of a mark
shall be in respect of particular goods or services.50
49. For instance, the distinctive Coca-Cola bottle can now be acceptable
for trade mark registration under the United Kingdom Trade Marks
Act; whereas in the past under the 1938 Act the bottle itself was
refused registration. See Paul Marett, Marett: Intellectual Property Law,
(London: Sweet and Maxwell, 1996), pp 159-160.
50. Section 11 South African Trade Marks Act.
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Therefore, there are no undue restrictions to the
registration of marks and service providers are clearly
protected. This way the Act provides wider protection for
a proprietor or a brand owner in the course of business.51
Similarly, Ghana’s regime is also wider than Nigeria’s
with regards to the definition of trademarks. The definition
of a trademark under the Ghanaian Act covers goods and
service marks.52
Protection of Well-Known Marks
Although Nigeria is a signatory to the Paris Convention on
the Protection of Industrial Property, since this
international obligation has not been domesticated into
local law, they are largely unenforceable in the country.
Provisions are made for international arrangements under
the Nigerian Trade Marks Act, but in practice, apart from
having a persuasive effect, the actual provisions of these
International Conventions are not usually implemented or
enforced.
One such provision is the protection of famous or well
known-marks. Under the Nigerian Trade Marks regime,
well-known marks may only be registered as defensive
marks pursuant to Section 32 of the Nigerian Trade Marks
Act. This implies that where a proprietor has a well-known
mark, he is obliged to register it in all the available classes,
irrespective of whether he uses or proposes to use it in
those classes. In the event that the well-known mark owner
fails to register in all classes, the question arises whether a
well known mark gets protection against an infringement,
51. See section 1 (2)(xi) Trade Marks Act of South Africa.
52. Section 1 – Meaning of Trade Mark.
Trademark Law Reform in Nigeria: A Practitioner’s Analysis
215
especially if they are classes unrelated to the business that it
does? The answer in theory appears to be no.53
This contrasts with the South African position. Under
the South Africa Trade Marks Act as amended, well
known-marks (as provided for under the Paris Convention
on the Protection of Industrial Property) are protected in
favour of proprietors in member states.54
Collective Trademarks
A collective trademark is a mark capable of distinguishing,
in the course of trade, goods or services of persons who
are members of any association from goods or services or
persons who are not members therefore.55 It serves as a
kind of indication of source of members of a particular
group, for instance geographical names or appellations of
origin.56 Collective marks are recognized under Article 7bis
of the Paris Convention. The importance of collective
marks as a branding strategy in global trade is increasing
and so is its presence in the trademarks laws of nations.
Under the Nigerian Trade Marks Act, there are no
provisions for the registration of collective trademarks, but
provisions for the registration of collective trademarks are
53. It may be argued that on the strength of Section 11 of the Act an
application to register a mark that is confusingly similar ought to fail
irrespective of if the contending classes for the goods are different.
54. Section 35 of the South African Trademarks Act.
55. See section 49(1) of the United Kingdom Act. See also Groves. Op cit,
p 556.
56. Wikipedia: “Collective trade mark”, http://en.wikipedia.org/ wiki/
Collective_trade_mark (assessed on 15th September, 2011).
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found under the South African Trade Marks Act57 as well
as that of Ghana.58
Recommendations/Conclusions
This article has established that the Nigerian Trade Marks
Act is deficient in several areas and falls below the standard
of equivalent laws in other countries both internationally
and at the Sub-Saharan regional level. Therefore, the Act
needs to be amended urgently to deal with current realities
and challenges of 21st Century commerce. The definition
of trademark clearly needs to be widened to include
devices, designs and service marks; well-known marks need
to be protected as a matter of right by statute and not by
an action in passing off; the Paris convention needs to be
incorporated into local law. Additionally, in order to meet
with the challenges of the growing menace of
counterfeiters/infringers of trademarks, there is need for
reform to include procedures for administrative seizures
into any new act being considered.
57. Section 43 thereof.
58. Section 2.