AN ANALYSIS OF TRADEMARK REVOCATION IN NIGERIA

Author: O. M. Atoyebi S.A.N FCIArb. (U.K.)., Contributor: AMAEFULE LINDA .C.

September 4, 2023
12:33 pm

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In Nigeria, the revocation of trademark refers to the legal process of cancelling or deleting a registered trademark from the register of trademarks by the Registrar of Trademarks or the Federal High Court.

Under the Trademarks Act, a trademark can be registered with an initial lifespan of seven years, with a fourteen-year possible extension upon approval by the Registrar of Trademarks at the Federal Ministry of Industry, Trade and Investment[1]. An application for renewal should be made not less than three (3) months from the due date[2]. However, a registered trademark may also be removed from the Trademark Register upon an application under certain circumstances, according to the Act.

To maintain the integrity of the Nigerian trademark system and prevent the registration of a trademark that does not meet legal requirements, trademark revocation is essential for consumer protection, as it ensures that only trademarks that meet legal requirements are used. This article, therefore seeks to highlight the grounds for revocation with the main focus on “non-use” as grounds for the revocation of trademarks in Nigeria, the causes of revocation and the consequences of revocation thereof.

THE GROUNDS FOR REVOCATION OF A TRADE MARK[3]

Under the Trademarks Act of Nigeria (“TMA”), there are various grounds for which the Registrar may revoke a registered trademark. It includes:

1. Non-use, that is, where the trademark was registered without any bona fide intention by the applicant to use same and there has been no bona fide use of the trademark up to one month before the date of the application; or that up to one month before the date of the application, the trademark has not been used for a continuous period of at least five years.

2. Contravention or non-adherence to condition antecedents listed on the register regarding a trademark.

3. Non-renewal of an expired trademark.

NON-USE AS A GROUND FOR REVOCATION OF TRADEMARK[4]:

Under the express provision of Section 31(1) of the Trademark Act, 2004, a registered trademark may be removed from the Register of Trademarks in relation to the specific products for which the mark is registered. Such revocation may be initiated through an application by any party with a direct interest, with respect to the court or the Registrar, at the discretion of the applicant. The grounds for removal are as follows:

A. ABSENCE OF GENUINE INTENT TO USE:

This refers to a situation whereby the owner had no genuine intention to use the mark at the time of registration, and there was no actual use of it after it was registered for one month preceding the application for removal. As a result, if the owner had no intention to use the mark at the time of registration but later used it in relation to the registered goods, there would be no claim of non-use, and the mark cannot be removed from the register.

B. A GENUINE INTENT TO USE:

This refers to a situation wherein initially, there was a genuine intention to use the mark in relation to the registered goods or services, but a continuous period of five years and one month has elapsed without any use of the mark in relation to those goods or services. The computation of time here is essential because the applicant must demonstrate that the mark was not used for five years, counting backwards from the date of application rather than five years from the date of registration. This means that the “non-use” is computed from a month before the application to expunge the trademark is made.

Under Section 31(3) of the TMA, the trademark tribunal is allowed to refuse an application made under Section 31(1) and/or (2) if it is shown that there has been genuine use of the trade mark by any proprietor, in relation to goods of the same description as those to which the application relates, before the relevant date or during the relevant period. However, the tribunal cannot refuse the application for removal of the trademark if the applicant has been permitted under Section 13(2) of the TMA to register an identical or nearly resembling trade mark for the goods in question, or if the tribunal deems it appropriate to permit the applicant to register such a trademark.

In addition, Section 31(4) of the TMA provides specific parameters for non-use for a genuine intent to use a trademark which states that an applicant cannot rely on the non-use of a trademark if it can be demonstrated that such non-use was due to special circumstances in the trade, rather than an intention to refrain from using or abandoning the trademark in relation to the relevant goods.

Hence, the difference between both grounds lies in the first ground dating back to the time of registration, while the second ground dates back five years. In essence, the first ground consists of two concurrent elements before an order of removal can be made which are; firstly, registration with no genuine intent to use and secondly there has been no genuine use of the trademark in relation to those goods by any owner up to one month before the date of the application. The second ground has only one element: a continuous period of non-use for five years preceding a month before an application for removal is made.

EXCEPTION TO REVOCATION ON THE GROUND OF NON-USE: WELL-KNOWN MARKS[5]:

Subject to the provisions of the Trademark Act 2004, a registered trademark can be removed from the Register of Trademarks in connection with specific items for which it is registered[6].

The law on well-known marks is explicitly provided in Section 32(1) of the Trademark Act. It states that when a trademark consisting of an invented word or words that have become so well known, as it pertains to any goods in respect of which it is registered and is being used (referred to as “the familiar goods”), that the trademark’s use in relation to other goods would likely indicate a connection in the course of trade between those goods and a person entitled to use the trademark of the familiar goods, the trademark may be registered in the name of the proprietor in respect of those other goods as a defensive trade mark[7]. This registration can occur even if the proprietor registered in respect of the familiar goods does not use or intend to use the trademark in relation to those other goods and notwithstanding anything in Section 31 of the Act. Once registered as a defensive trade mark, the trademark cannot be removed from the register in respect of those goods under Section 31 of the Act.[8]

The principle of non-use stipulates that the absence of utilization of a trademark in the registered class constitutes a valid ground for revocation. However, an exception to this rule is recognized for well-known marks. Section 31(1) acknowledges that a highly renowned mark may be exempted from revocation on the Trademark Register if the proprietor submits an application and the mark receives the appropriate acknowledgement from the Registry as a well-known mark.

CAUSES OF REVOCATION OF TRADEMARK[9]

The revocation of a trademark may occur for several reasons, including:

1. Non-Use Of Trademark:

If a trademark has not been used for an extended period, it may be considered abandoned and subject to revocation. The Trademark office requires that trademarks be used in commerce and trade in order to maintain their registration. Section 47 of The Trademarks Act, 1999, states that the Registrar can remove the trademark on the grounds of non-use.

The Registrar can revoke/cancel the trademark if it is not used for a continuous period of five years or more. When a third party is applying for such revocation, the petitioners have to provide evidence that will prove the non-use of the trademark for five or more years.

2. Misrepresentation Of Trademark Information:

Giving inaccurate or misleading information regarding a trademark when obtaining or maintaining a trademark registration is referred to as misleading trademark information. When the owner of the trademark gives false information about the owner of the product or services connected to the trademark or the date of use of the trademark, if the trademark includes false or misleading information, then the trademark is subject to revocation.

3. Change In Ownership:

A trademark registration may be revoked if it is transferred to another entity without proper authorization or if the transfer results in a change in the goods and services associated with the trademark. A change in ownership must be appropriately documented and registered with the appropriate authorities in order for the trademark office to recognize it. The change in ownership may also have an effect on the trademark’s legal status[10]. The trademark may be subject to revocation, for instance, if the new owner fails to use it in commerce or fails to comply with the legal conditions for trademark registration.

4. Infringement Of Trademark Rights:

If the trademark is found to be infringing on the rights of another party, it may be subject to revocation. This can occur if the trademark is similar to an existing trademark and needs to be clarified among consumers.

CONSEQUENCES OF REVOCATION OF TRADEMARK

The revocation of a trademark can have severe consequences for the owner of the trademark. The main aim of a trademark is to provide the owner with the exclusive rights to use the trademark[11]. The owner of a trademark forfeits their sole right to use it if their trademark is cancelled or revoked. As a result, other parties are now able to utilize the trademark, which could lead to consumer confusion and lessen the original brand’s uniqueness.

1. Financial Losses

The revocation of a trademark can cause the owner of the trademark to suffer considerable losses. This may happen if the owners are ordered to stop using the name and rebrand their goods or services or if they must pay compensation to the other party for trademark infringement.

2. Loss Of Reputation

A revocation of a trademark can negatively affect a company’s or brand’s reputation. Consumers could link products bearing the revoked trademark to defective or fake goods, which could damage the credibility and reputation of the brand.

3. Legal Costs

The owner of the trademark may incur hefty legal fees as a result of the trademark being revoked. This might happen if the trademark owner is forced to take part in legal actions to protect their rights.

4. Difficulty In Enforcing Trademark Rights

Enforcing trademark rights can be challenging when a trademark has been revoked/cancelled. It may be challenging for the owner to do so in the future. This is due to the trademark’s diminished distinctiveness, and it may be challenging to establish that it is separate from other trademarks.

Furthermore, to avoid potential trademark revocation, it is critical to monitor how the trademark is being utilized. This can be accomplished through regular trademark searches, internet platform monitoring, and the hiring of a trademark monitoring firm.

CONCLUSION

The legal process of trademark revocation can have a significant impact on the brand reputation of a corporation. By understanding the causes, processes, and methods involved in trademark revocation, as well as how to avoid it, the corporation can preserve its trademark and secure its continued use. Using the brand for commercial advantage on a regular basis, keeping it updated, and keeping an eye on it are all important steps in preventing trademark infringement. Trademark registration must be protected and kept up to date by adhering to all applicable laws and regulations.

[1] Lawpadi:”Processing for registering a Trademark in Nigeria”.

[2] Ibid

[3] The International Comparative Legal Guide to: Trade Marks 2012. Available at TM13_E-Edition Real Estate 2006 (banwo-ighodalo.com

[4] A. Ademola & J. Odili: Nigeria: Revocation Of Trademarks In Nigeria: An Analysis Of Non-use As A Key Consideration.

[5] A. Ademola & Joel Odili Ibid

[6] Section 31(1) TMA 2004

[7] A. Ademola & J. Odili Ibid

[8] Section 31 of the Trademark Act, 2004.

[9] Shreya Patel: What Is The Revocation Of A Trademark? Available at https://corpbiz.io/learning/what-is-the-revocation-of-a-trademark/

[10] F. Onuobia, S. Oyelude, & J. Eneh: “Trade Mark Laws and Regulations Nigeria 2023” Accessible at https://iclg.com/practice-areas/trade-marks-laws-and-regulations/nigeria

[11] P.B. Ibijoke: “THE CHALLENGES OF TRADEMARK PROTECTION LAW IN NIGERIA” Accessible at < http://repository.pgcollegeui.com:8080/xmlui/bitstream/handle/123456789/848/byron.pdf?sequence=1&isAllowed=y>

AN ANALYSIS OF TRADEMARK REVOCATION IN NIGERIA

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