Intellectual Property LPP 406 PDF

INTELLECTUAL PROPERTY LPP 406 Application System for the registration of trademarks  Right to apply and Application System A person that wants to apply for a trade mark registration in either Part A or Part B of the Register may apply to the Registrar in writing. S...

INTELLECTUAL PROPERTY LPP 406 Application System for the registration of trademarks  Right to apply and Application System A person that wants to apply for a trade mark registration in either Part A or Part B of the Register may apply to the Registrar in writing. Section 18(1) TMA Formal application may be preceded by a request for preliminary advice on the distinctiveness of the trademark Where the Registrar objects to the registration of the mark on its lack of distinctiveness, the applicant forced to withdraw his application, will be reimbursed and shall be entitled to be repaid any fee paid by him on the filing of the application  Contd. A search is carried out before registration of a trademark to ascertain whether the trademark is not identical to, or similar to an existing registered trademark To achieve this, a search form will be filled and it will consist of the name, specimen and class which is sought to be searched and payment of the appropriate search fee Where the search reveals that no similar mark is on the register, in respect of the class of goods, this may indicate the availability of the mark, though non-conclusive Where the search is successful, an application form, duly filled will be submitted to the Registrar, and accompanied by clear and distinct representations of the mark and prescribed fees Contd. Once there is a receipt of a complete application, the Registrar issues an official number and filing date of the application. The filing date, issued, is of critical importance in the event of competing applications and uses. The Registry thereby, commences examination of the trademark to determine whether it is registrable based on considerations such as distinctiveness, whether it is contrary to public policy or falls under non-registrable marks It is the discretion of the Registrar to either refuse or accept the mark Contd. The Registrar has a duty to refuse if the mark is contrary to law Where an application is refused, the grounds for the decision shall be put in writing Where the Registrar is satisfied with the examination, a written notice of acceptance will be issued Once the trademark has been accepted, it is advertised in the Trademarks Journal A person who is in opposition of the acceptance, may give written notice of opposition within 2 months of the publication and its grounds for the opposition  Contd. Where a notice of opposition has been received by the Registrar, he is duty bound to inform the applicant, who shall, within one month of the notice of opposition, send a counter-statement of the grounds on which he relies for his application Where the applicant fails to respond, the matter shall be treated as abandoned Where there is no opposition or that the opposition has been decided in favour of the applicant, the Registrar shall register the trademark either in Part A or Part B Nabisco Inc. v. Allied Biscuits Co. Ltd. Contd. The registration of a mark in Part A and Part B of the register, shall confer on the registered proprietor, the exclusive rights to use the trademark in relation to the classes of goods in which it is registered. The certificate of registration is valid at the first instance, for seven years which is renewable every fourteen years. Registration of associated trademarks The proprietors of trademark may, in some instances, seek to register similar or identical trademarks belonging to them The Registrar registers associated trademarks to avoid confusion The Act provides for separate registration of parts of a trademark where the proprietor of the trademark claims to be entitled to the exclusive use of any part separately. Section 24 The TMA under Section 25 provides for registration of resembling trademarks in a series- this applies where trademarks resembling each other in their material particulars are sought to be registered by the same proprietor, in respect of the same goods or description of goods Contd. The marks will differ in respect of: Statements of the goods in relation to which they are respectively used or proposed to be used; or Statements of number, price, quality or names of places; Other matter of a non-distinctive character which does not substantially affect the identity of the trademark; or colour Trademarks that are registered as associated trademarks, shall be assignable and transmissible only as a whole and not separately but shall for all other purposes, be deemed to have been registered as separate trademarks  Contd. The Registrar may dissolve the association if he is satisfied that there would be no likelihood of deception being caused and the register will be amended accordingly  Duration and Renewal of Registration The duration for the registration of a trademark is indefinite. Section 23: provides for an initial seven-year and registration may be renewed at intervals of 14 years. Where a mark has not been renewed, and a notice has been sent to the proprietor and there is no response, the mark may be removed from the Register Where a mark is removed on the register, such mark will still be deemed to be on the register for the purpose of any application for the registration of a trademark Use and effect of non-use This is under Section 31(2) This section deals with the use and effect of non-use of a trademark and its subsequent removal from the register At the request of any person, the court or Registrar may remove a registered trade mark from the register for non-use if established that it was registered without any bona fide intention to use it and that no bona fide use of the trade mark took place up to one month before the application date, or for non-use during a continuous period of at least five years during which the trade mark was registered The longer the mark remains on the register without use, the easier to prove absence of a bona fide intention to use it Use and effect of non-use contd. In Procter & Gamble Ltd. v. Global Soap & Detergent Industries, the registered mark, ‘Flash’ in respect of soap and detergent was ordered to be expunged for non-use. It had not been used since its registration in 1960 until between April and June 1988. The court held in this case that the three-month use of the mark was not a bona fide use. Rectification and correction of the Register This is provided under sections 38 to 42 Rectification includes expunging, varying, striking out or altering the entry in the register The Registrar may on request, correct any error or enter any change in the registered proprietor’s name or address. The application for rectification or correction may be made by any person concerned in some cases, while in others, the registered proprietor or user may make it In addition, the court will have the power to review any decision of the Registrar relating to the rectification and correction of the register Removal from the Register for Non- Compliance Section 23(3) The Registrar is given the power to issue statutory notice at a date not less than one month and not more than two months before the last registration of a mark expires, and if there is no renewal fee has been paid to notify the registered proprietor of the impending expiration The Registrar would issue a second statutory notice if the fee has not been paid not less than 14 days and not more than one month before the expiration expires If the registration expires, the Registrar must advertise the mark for non-renewal in the Trade Marks Journal Contd. If the renewal fee is received within one month after the advertisement in the Trade Marks Journal, the Registrar may renew the mark Where the renewal fee remains unpaid after the stated period of one month, the Registrar may remove the mark from the register on the date of its last registration Upon removal, the Registrar will have it documented in the register The proprietor, upon payment of the renewal fee with a restoration fee, may apply for restoring the mark on the register If a mark has been removed from the register for non-use, no Effect of Registration Once a mark has been registered, it gives the proprietor/owner the exclusive right to exclude others from using the trade mark for commercial purposes It protects the proprietor against infringement Other aspects of trademarks Licences and Assignment Trade Marks and Foreign Investment Trade Marks and Transfer of Technology  Contd. Licences and Assignments Licensing is significant under trade mark ownership It permits exploiting the trade mark outside the owner’s country It is defined as an arrangement where a trademark owner, known as the licensor, grants permission to another (licensee) to use that trademark on mutually agreed terms and conditions. By licensing the trademark, the registered proprietor allows others to use the mark without assigning the ownership to them Such use however must be registered as the proprietor and registered user are required to apply in writing to the Registrar: Section 34(1)  Contd. Where the Registrar is satisfied that the use of the mark by the proposed registered user would not be contrary to public interest, he may register such use subject to any conditions or restrictions which he deems proper The discretion is on the Registrar to cancel or vary the registration of the registered user if it is found that the mark has been used in such a way as to cause, or be likely to cause deception or confusion Where registration has been effected, the consequences is that the permitted use will be on the proprietor and registered user. Responsibility will still fall on the proprietor as to ensure that the mark is not exploited by any person who is not a registered user  Contd. The proprietor bears responsibility to institute proceedings in respect of any infringement and where he refuses or neglects to do so within two months after being called upon to do so, the registered user may sue in his own name The registered user is entitled to use the trademark in the way and manner prescribed in the agreement The right subsisting in such registered user has been recognised as a legal right which is protected by the court  Contd. The proprietor can also put other limitations on the use of the mark through the terms that he puts into the licensing agreement A mark will be infringed if it is used by a person that is not the proprietor or the registered user in a similar or identical class of goods in such a way as to be likely to deceive or cause confusion or indicate a connection between the proprietor or registered user and the alleged infringing use Trademark licensing At a point, trademark licensing was considered impossible because one of the functions of a trademark was to indicate source The fact that a good or service is produced or delivered by a licensee (a person authorized by the owner to use the trademark) means that the good or service is emanating from a source other than the owner It would therefore amount to a false or deceptive representation to the consumer as to the true source of the products involved Trademark licensing became acceptable where the licensor (owner of the trademark) remained in control of Contd. Quality control is the essence of trademark licensing provided that the means for ensuring that the licensee’s use is consistent with the licensor’s interest in the trademark and at the same time, ensuring that the consumer will get essentially the same quality goods or services no matter where the trademarked good is purchased or the service is experienced Different ways of licensing trademarks Franchising: It is a specialized license and it is the transfer of the right to sell a trademarked product through a system prescribed by a franchisor who owns the trademark Examples of franchise companies: KFC, Zartech chicken and Burger King It is a business agreement between a franchisor and a franchisee. The franchisor is the owner of the business The franchisor sells the rights to their brand, including products and services, intellectual property and more to a franchisee who will open up a separate branch under that brand’s name, which is essentially a duplicate of the original business Contd. Franchises and licenses are both business agreements in which certain brand aspects are shared in exchange for a fee A franchise agreement is a contractual relationship where a franchisor grants a franchisee the right to operate a business using the franchisor’s brand name, business model and systems The franchisor has a high degree of control over the franchisee’s operations and a fee is paid to the franchisor A licence agreement is a limited arrangement that grants the licensee the right to use a specific Contd. The licensor has limited control over the licensee’s operations, and the licensee pays the licensor a fee or royalties for the use of the intellectual property The TMA is however silent on the franchising of trademarks but in reality, most companies give rights to third parties by way of franchise to distribute certain goods or services for a while The Franchisor enjoys perpetual ownership rights in the product or services covered by the registered trademark  Trademark Licensing contd. Advantages of trademark licensing: Passive income: an owner of the trademark can license the use of the mark to as many users or licensees as possible without the risk of losing the ownership rights, thereby creating additional revenue by such user(s) Business expansion: with licensing in place, it makes it easier to penetrate foreign markets, as the license may prevent cumbersome inter-country regulatory compliance requirements Advertisement: the more a trademark is used, the greater the recognition of the brand Strategic Partnership: it will be easier for the licensor to get their products into new markets than if they were doing the work on their own Contd. Disadvantages of trademark licensing: Trademark theft: this increases the owner to exposure of theft because it may be difficult to monitor the use of the licensed trademark Threat to reputation: where any element of the licensing agreement is mismanaged or breached such that it causes any harm to a customer or client, the licensor and licensee can suffer a reduction in the brand reputation Reliance on the quality of the trademark: the profitability of the licensee’s venture is dependent on the quality and continued strength of the brand, which cannot be out rightly guaranteed Assignment of trademarks A registered trademark owner in Nigeria can assign his rights under Nigerian law Trademark assignment is a process of transferring the ownership rights enjoyed by a registered proprietor of a trademark to another person  Assignment contd. The assignment of a trademark can be in respect of all the goods in the class of which it is registered or in respect of some but not all of the goods and services covered by the registered trademark Such assignment is entered on the Register and failure to so register a document or instrument showing an assignment shall render such document inadmissible in any court as proof of title to a registered trademark unless the courts otherwise directs Section 26(2), TMA, provides that the proprietor of a trade mark has the right to allow another person to be a registered user of all or any of the goods in which a trade mark is registered Contd. At common law, an assignment of trademarks was effective only if it was made together with the goodwill of the business It has been provided under Section 26, TMA, that, ‘notwithstanding any rule of law or equity to the contrary, a registered trademark shall be assignable and transmissible either in connection with the goodwill of a business or not’ A trademark assigned independently of the goodwill of the business is valid  Trade Marks and Foreign Investment Trademark encourages foreign investment Trademarks are veritable instruments of technology transfer and it involves arrangements between a foreign proprietor transferring rights for trade mark use to a local licensee Problems may however arise with this arrangement in three ways: The first way is that a foreign proprietor would establish a manufacturing company in Nigeria with some local business men The name and logo of the manufactured goods may be the same as those of the parent company abroad. Such a name and logo will have to be registered in Nigeria  Contd. A problem might arise if the foreign partner quits the venture and may not wish to have its name and logo to continue to be on the goods anymore. In Kolex Mercantile Import v. Alliance International Nigeria, the defendants succeeded in their counter-claim, and an injunction was granted to restrain the plaintiff from infringing their registered trade mark in order to ensure that the plaintiff did not continue, by deceiving the public that he was still marketing their goods  Contd. The second instance is where a foreign company is importing its goods into Nigeria through a Nigerian agent, a company or an individual. The Nigerian agent would register the names of the products but if the foreign company changes its Nigerian agent and takes a new one, the former agent could refuse to release the registration of the trade mark that is already in his name The third instance is when a company, usually a new local business, uses a name or trade mark similar to or identical to an existing famous foreign name or trade mark, thereby attempting to steal the goodwill of the owner of the mark  Contd. In Seven-Up Bottling Company v. Warri Bottling Company, the defendant manufactured a soft drink named, ‘Thumps-Up’. Seven-Up asked for an injunction to restrain the company from infringing its trade mark, ‘Seven- Up’. The order was granted because there was a possibility that ‘Thumps- Up’ could be confused with the plaintiff’s registered marks  Trade Marks and Transfer of Technology Under the TMA, there is no existing framework for technology transfer or industrial property rights All contracts and agreements relating to trade mark use must be registered with the National Office for Technology Acquisition and Promotion NOTAP registers contracts and agreements that involve the transfer of foreign technology to Nigerian parties, including the use of trademarks This includes foreign franchise agreements which gives the franchisee the right to use the franchisor’s trademarks  The non-registration does not render the agreement void or invalidate the trade mark. The effect of non-registration is that any money in the form of royalty due to the proprietor under the agreement in foreign currency will not be remitted In other words, registration of transaction on technology transfer is voluntary and not compulsory  Contd. The advantages of registering with NOTAP is that it would protect Nigerian users of foreign marks from foreign partners who might include clauses in the agreement to their advantage NOTAP provides for the general administration, regulation and monitoring of licences and transmissions for the use or transfer of trade mark rights Infringement of Trademarks Trade mark infringement is also known as counterfeiting because the infringer is causing the buyer to believe that he is buying the genuine product Trade mark infringement is a statutory tort arising by virtue of a trade mark registration at the trade marks registry Evidence of a trade mark’s ownership will be adduced by a duly certified copy of the entry in the register of trade marks The essence of a trade mark’s registration is to protect a proprietor in the exclusive use of the trade mark in connection with its goods Contd. In Rodgers and Sons v. Rodgers & Company, it was stated that, ‘No man is entitled to carry on business in such a way as to represent that it is the business of another, or is in any way connected with the business of another Contd. The right of an exclusive user is said to be infringed by a person who uses a mark identical with it or so closely resembling it as to likely deceive or cause confusion in the course of trade. Section 5(2) Any invasion of the exclusive use by the proprietor is actionable Where a mark is not registered however, it may be actionable as passing off The infringer uses somebody else’s registered mark or a confusingly similar sign as a trade mark to indicate the source of goods or services. If it is not prevented in a competitive market, not only will the owner of the mark lose out but consumers will be unable to trust the marks they see J.T. Federal Electric Industries v. Sonnet Nigeria Contd. when a trademark is registered, it confers on the proprietor exclusive rights to use the mark in relation to goods or classes of goods or services in respect of which it is registered. Any unauthorised use of a registered trademark on such goods or services constitutes an infringement of the proprietor’s rights Section 5(2), TMA It is only a registered proprietor or a registered user that is authorised to use the mark It is to be noted that the registered user must comply with the terms of use, otherwise he may be liable for infringement  Contd. An important aspect in the protection of a trademark is the question whether the use of similar signs constitute an infringement When it creates confusion, it is generally recognised as an infringement It is not the differences between two trade marks but it is their similarities which have to be taken into consideration The similarity may be on three levels: visible, audible or pronunciation Contd. Examples of marks that have been held to be so similar as to be calculated to deceive or confuse are: Bandmaster cigarettes with the picture of a white man in a bandmaster’s uniform held to be similar to Barrister cigarettes with the picture of a white man in a barrister’s robe Peacock milk held to be confused with Peak milk Glucos-Aid held to be similar to Lucozade Pikin held to be similar to Piccan Casorina held to be similar to Castoria Contd. For a trade mark infringement, two types of action may be initiated and they are: civil suit and criminal proceedings Most claimants prefer the civil process because criminal proceedings carry the heavier burden of proof beyond reasonable doubt and require the cooperation of relevant prosecuting authorities When there is an infringement issue, the first step is to provide evidence of the trademark in dispute The plaintiff also has the burden to establish that the defendant has infringed his right by the unauthorised use of the mark in the course of trade and in relation to goods(or services) in respect of which the mark is registered Contd. Where the defendant has, in the course of trade, used an identical mark, there is a clear case of infringement There are cases where the marks are not exactly identical but may have close resemblance to the registered mark but it is a question of fact depending on the circumstances of the case whether the marks are so similar as to be likely to deceive or cause confusion The onus however lies on the proprietor of the registered mark to prove infringement Remedies for Infringement When a plaintiff is successful in an infringement claim, the court has to decide and determine the nature of the remedies available to him The Act is however silent on the nature of remedies which are available for successful plaintiffs in an action for infringement but case laws normally fall back on civil remedies such as injunction, account of profits, damages, anton piller order, class action. Section 38, TMA, provides that where a trademark has been registered erroneously, any person concerned may apply to the court, or where applicable, the Registrar, for an order expunging or varying the entry as appropriate. This provision is important where an entry in the register is held to be capable of confusing or deceiving members of the public Criminal action for infringement of trademarks The law also provides for criminal action. the rationale behind these is to deter criminal acts who are dealing for profit in goods with false or deceptive marks which tends to mislead the public; it may also endanger public health, safety and well-being Relevant laws on criminal sanctions include the Merchandise Marks Act The Merchandise Marks Act prohibits forging trademarks which makes the mark that so nearly resembles another trademark as to be calculated to deceive; false application to goods of any trademark or marks that so nearly resembles another trademark Contd. The Trade Malpractices (Miscellaneous Offences) Act criminalises offences of labelling, packaging, sale, offering for sale or advertising of any product in a manner that is false or misleading or is likely to create a wrong impression as to its quality, character, brand name or safety. The Counterfeit and Fake Drugs and Unwholesome Processed Foods (Miscellaneous Provisions) Act prohibits the sale, distribution, importation and possession of counterfeit, adulterated, fake drugs or unwholesome processed food. The producers of such products would usually append to their illegal products, the trademark of legitimate producers in order to misrepresent the goods as genuine products to unsuspecting members of the public