Trademark Law and Infringement Quiz

Intellectual Property LPP 406 - Trademark Registration

• Right to Apply and Application System:

  • Individuals can apply for trademark registration in Part A or Part B of the register, in writing.
  • A formal application can be preceded by a request for preliminary advice regarding the distinctiveness of the trademark.
  • If the Registrar objects to registration due to a lack of distinctiveness, the applicant must withdraw the application and will receive a refund of fees paid.

• Trademark Search:

  • A search is conducted before registration to ensure the trademark isn't identical or similar to an existing registered trademark.
  • The search form requires details such as the trademark name, specimen, and class of the goods to be searched and includes the appropriate search fee.
  • If the search finds no similar marks, it suggests the trademark may be available for registration.
  • Successful searches require an application form with clear representations of the mark and prescribed fees submitted to the Registrar.

• Complete Application Receipt:

  • Upon a complete application receipt, the Registrar issues an official number and filing date.
  • The filing date is crucial in cases of competing applications or uses.
  • The Registry begins examining the trademark for registrability, considering distinctiveness and public policy.
  • The Registrar has the discretion to refuse or accept the trademark.

• Refusal or Acceptance:

  • The Registrar has a duty to refuse if the trademark is against the law.
  • Grounds for refusal are put in writing.
  • If the examination is deemed satisfactory, the Registrar issues a notice of acceptance.
  • Accepted trademarks are advertised in the Trademarks Journal.
  • Opposing parties can submit written notices of opposition within two months after publication, outlining grounds for opposition.

• Opposition and Abandonment:

  • If a notice of opposition is received, the Registrar informs the applicant.
  • The applicant must submit a counter-statement within one month.
  • Failure to respond by the applicant leads to abandonment of the matter.
  • If no opposition, or if opposition is decided in favor of the applicant, the Registrar registers the trademark in Part A or B.

• Registration of Associated Trademarks:

  • Trademark owners may seek to register similar or identical trademarks to avoid confusion.
  • Separate registration of parts of a trademark is possible if the owner claims exclusive use of those parts (Section 24).
  • Similar trademarks in a series can be registered (Section 25).
  • The marks must differ in some aspects (e.g., goods in relation to their use/statement; statements of number, place, etc).
  • Color differences also can be used for distinguishing trademarks registered as associated trademarks; they can only be assigned as a whole, not separately.

• Registration Dissolution:

  • If the Registrar is satisfied that no likelihood of deception exists, the association may be dissolved.
  • The register is amended accordingly.

• Duration and Renewal of Registration:

  • Trademark registration duration is indefinite with an initial period of seven years, renewable every fourteen years
  • If no renewal is issued, and no response from the owner, the mark may be removed from the register.
  • A mark removed from the register will still be deemed on the register for any application regarding the registration of a trademark.

• Use and Effect of Non-Use:

  • Section 31(2) deals with the use and effect of non-use of a trademark, and its subsequent removal from the register.
  • The court or Registrar can remove a registered trademark for non-use if the trademark was registered without intent of use, or not used for a five-year period.
  • An appropriate case to demonstrate this principle of non-use is Procter & Gamble Ltd. v. Global Soap & Detergent Industries.

• Rectification and Correction of the Register:

  • The rectification or correction is done in accordance with sections 38–42, as this includes actions like expunging, varying, striking out or altering entries.
  • The Registrar can, on request, correct any error or enter changes (e.g., name, address).
  • Applications for rectification can be made by any person or, in specific instances, by the proprietor.

• Removal from the Register for Non-Compliance:

  • The Registrar can issue statutory notices for impending expiration due to non-payment of renewal fees.
  • Two such notices are issued to the proprietor regarding the expiration in a given time frame.
  • If the renewal fee is received within one month, the Registrar may renew the mark upon restoration fee payment.
  • If the fees aren't paid, the mark is removed from the register.

• Effect of Registration:

  • Registration grants the trademark owner/proprietor exclusive rights to prevent others from using the mark, specifically, for commercial purposes.
  • The owner benefits from protection against infringement.

• Other Aspects of Trademarks:

  • Trademarks are associated with licenses and assignments.
  • Licensing refers to arrangements where a licensor gives permission to a licensee to use a trademark for a set period of time.
  • This can include franchise agreements; they are limited arrangements and the right to use a specific mark is granted to a licensee by the licensor.

• Trademark Licensing:

  • This is the licensing of a trademark for its use.
  • Advantages include the potential for passive income and business expansion (and advertisement).
  • Disadvantages include potential for loss due to trademark theft and possible threat to the use owner's reputation from mismanaged contracts.

• Assignment of Trademarks:

  • Trademark assignment involves transferring ownership rights to another party.
  • Assignment can cover all goods or specific goods.
  • Prior registration ensures that this is admissible in court.
  • Common law typically required an assignment with the goodwill of the business to be effective.

• Trade Marks and Foreign Investment:

  • It encourages foreign investment into a country in accordance to the technology transfer between foreign proprietors to the rights to a local licensee.
  • Problems may arise when the company is a manufacturing company with some local businesses and the name and logo are the same; then, the name and logo must be registered to Nigeria.
  • Issues might arise if investors quit the venture.

• Trade Marks and Transfer of Technology:

  • There is not a direct connection between the agreement and the registration
  • The agreement is only registered in NOTAP to ensure that the clauses do not cause issues.

• Infringement of Trademarks:

  • Infringement, also known as counterfeiting, occurs when a person uses a mark identical or very similar to a registered trademark, leading to deception, confusion, or passing off.

• Remedies for Infringement:

  • When infringement is successful, the court determines suitable remedies, drawing from civil procedures such as injunctions, account of profits, damages, and Anton Piller orders.
  • Erroneous entries in the register can be corrected or expunged.

• Criminal Action for Infringement:

  • Criminal actions deter intentional fraudulent use of marks for profit-related purposes.

• Trade Mark Acts:

  • Laws like the Merchandise Marks Act prevent the use of identical or confusingly similar trademarks by others.

• Infringement of Trademarks - The Issue of Similar Marks (Relevant Considerations):

  • The law determines whether the similarity of marks creates confusion.
  • Similarity can be in terms of visualization, pronunciation, or audibility of marks.

• Case Examples:

  • Rodgers and Sons v. Rodgers & Company: Illustrates the principle that no person should misrepresent themselves as an established business.
  • Kolex Mercantile Import v. Alliance International Nigeria: Illustrates the issue of maintaining a business name when a partnership is ended or dissolved

• Application to General Principles: The case examples illustrate the application of legal principles related to intellectual property, such as the importance of registration, the concept of exclusive rights, and addressing potential infringement issues.