Protecting Your Brand: First Use vs Trademark Registration Under Nigerian Law

CONTRIBUTOR: FAVOUR SOMTO NWACHUKWU

INTRODUCTION

In today’s competitive business environment, a brand name, logo, or slogan is often one of a business’s most valuable assets. For many Nigerian entrepreneurs, especially small businesses, online vendors, and content creators, Brand Identity is central to customer recognition and commercial growth.

However, a common misconception persists: that simply using a business name or logo automatically grants legal ownership. Under the Nigerian law, this assumption is incomplete and potentially costly. This article examines the distinction between first use and trademark registration, highlighting the legal implications of each and explaining why formal registration remains the most reliable way to secure and enforce brand rights in Nigeria.

The trademark registration in Nigeria provided for by the Trade Marks Act LFN 2004 is one important way to protect and distinguish someone’s trade symbols in Nigeria. Registering a trademark in Nigeria is the only way to protect a unique brand for goods or services in the marketplace.

UNDERSTANDING TRADEMARKS UNDER THE TRADEMARKS ACT

A trademark is defined as 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 user to use the mark.^[1] The requirement for registrability includes distinctiveness^[2], non-deceptiveness^[3] and non-similarity to existing marks.^[4]

BASIC REQUIREMENTS FOR TRADEMARK REGISTRATION IN NIGERIA

The basic requirements every intending trademark applicant should prepare or provide include the following:

• Logo, which may include Words and/or Device
• Name of the applicant
• Contact details of the applicant
• specification of goods/services for which the trademark is sought to be registered;
• the class of goods/services;
• Power of Attorney appointing an agent to conduct such registration (an accredited agent/lawyer may help to prepare the power of attorney).

THE CONCEPT OF FIRST USE vs FIRST TO FILE PRINCIPLE IN NIGERIA

The first-to-use principle is a fundamental concept in intellectual property law that grants rights to the party who first uses a trademark, trade name, or other intellectual property in commerce, rather than the party who first registers or files for protection. This principle prioritizes actual use over mere registration or filing.^[5]

Under the first-to-use principle, prior continuous use of a trademark or trade name, even without formal registration, can establish common law trademark rights. This means that the party that has been actively using the mark in commerce for a significant period can prevent others from using a confusingly similar mark, even if the later user has registered the mark. The first-to-use principle incentivizes businesses to actively promote and build brand recognition, rather than relying solely on registration.^[6]

Trademark rights may arise both through use and through registration. Nigeria does not operate a “first to use” trademark ownership system, it adopts a first to file approach. This means that Registration gives the owner of a registered trademark exclusive rights to use the trademark and protect it from any form of infringement.^[7] The owner of an unregistered trademark can acquire goodwill or brand reputation through the use of a distinctive mark. However, unless a trademark is registered in Nigeria, the owner shall not be entitled to institute any proceedings to prevent, or to recover damages for, infringement.^[8] A trademark must be registered in respect of particular goods or classes of goods. Upon registration of a mark, the owner is given the exclusive right to use that trademark in relation to those goods.

However, there are circumstances in which the proprietor of a registered trademark is not entitled to restrain the use of a mark that is identical or deceptively similar to the registered trademark. Such circumstances include situations where the use of the unregistered mark predates the use or registration of the registered trademark. This prior use may have been undertaken by the proprietor of the unregistered mark, the business owner, or a predecessor in title.^[9]

This is captured in the Supreme Court decision in American Cyanamid Co. v. Vitality Pharmaceuticals Ltd^[10] and confirmed that Section 7 of the Trade Marks Act protects a person who has continuously used an unregistered trademark before the registration of a later identical or closely similar mark. A registered trademark owner cannot restrain such prior continuous use even if the unregistered mark is identical or confusingly similar to the registered mark. “Continuous use” under Section 7 does not require the party relying on it to prove daily sales; it means uninterrupted use over time. The Court found that Vitality Pharmaceuticals Ltd was properly regarded as the successor in title to the earlier business (Vitality Medicine Stores) that had used “GONORCIN” since 1968. There was no evidence to the contrary, and concurrent factual findings on this point were upheld. Thus,

1. The appellant’s claim for an injunction against the respondent failed.
2. The respondent’s right to continue using “GONORCIN” was upheld based on prior continuous use.
3. The appeal was dismissed, and there was no order as to costs in favour of the respondent.

A brief summary of the case is that American Cyanamid Company (the appellant) owned and registered the trademark “GONOCIN” for an antibiotic product in Nigeria in 1973. Vitality Pharmaceuticals Ltd (the respondent) marketed an antibiotic under the name “GONORCIN”, claiming continuous use of that mark in Nigeria since 1968, five years before the appellant’s registration. The appellant sued for trademark infringement and sought an injunction to restrain use of the respondent’s mark.

There are a plethora of cases where the court has held that prior continuous use prevails over later registration. Registration does not confer an absolute monopoly, and a registered proprietor cannot restrain a bona fide prior user, including a successor in title. See the cases of Ferodo Ltd v. Ibeto Industries Ltd.^[11]

This case illustrates one of the several exceptions recognized under our laws to the principle of first to file. Other exceptions covered under the Trade Marks Act, where registration of trademarks that are identical or confusingly similar in respect of the same goods or description of goods by more than one proprietor may be allowed in case of honest concurrent use, or other special circumstances which, in the opinion of the court or the Registrar, make it proper so to do.^[12] While an infringement action is hinged on registration, the right to use a trademark under our laws does not depend solely on registration; rather, our laws recognize other vested rights as highlighted above.^[13]

In January 2026, there was an online debate across social media platforms about “RATEL” between Nigerian tech entrepreneur Linus Williams Ifejirika (popularly known as Blord) and Social Media Activist Martins Vicent Otse (VeryDarkMan), which vividly illustrated the gap between brand recognition and statutory trademark rights in Nigeria.

In summary, Blord publicly claimed to have registered “Ratel” as a trademark for his business brand, and through his legal team issued a cease-and-desist letter to VDM, insisting that VDM must stop using the name unless granted permission. This sparked a debate across social media and new outlets because the word “Ratel” was widely associated with VDM’s online community and identity.

LEGAL IMPLICATION UNDER TRADEMARK ACT

Trademark Protection is Class – specific. Nigeria, like many other jurisdictions, follows the Nice classification of goods and services. This means the same word can be registered by different entities in different classes, provided there is no likelihood of confusion.^[14]

Filing an application and obtaining registration does not confer an automatic right to estop others from using the same name across different classes. This is because the law recognizes that widespread public association with a mark can demonstrate goodwill, which may support passing off arguments in appropriate circumstances

While public association with a name may be powerful, only proper Registration under the Trademarks Act, including examination and certification, establishes enforceable rights. This case underscores the importance of understanding trademark classes, timelines, and statutory processes as laid out in Sections 18 – 23 of the Trademark Act.

STEPS TO REGISTRATION

1. Application – A formal application is filed with the Trademarks Registry.^[15]
2. Examination – the Registrar examines the mark to ensure compliance.^[16]
3. Publication – The accepted mark is published in the Trademarks journal, allowing 3^rd parties to oppose.^[17]
4. Opposition – Anyone may oppose the application on valid grounds.^[18]
5. Registration certificate – if there is no successful opposition, a registration certificate is issued, conferring exclusive rights on the proprietor.^[19]

REFERENCE

1. S. 67 of the Trademark Act ((hereinafter referred to as the ‘Act’) Cap T 13, LFN 2004 ↑
2. Section 9 of the trademark Act ↑
3. Section 11 of the trademark Act ↑
4. Section 13 of the trademark Act ↑
5. https://fiveable.me/key-terms/intro-intellectual-property/first-to-use principle#:~:text=Under%20the%20first%2Dto%2Duse%20principle%2C%20prior%20continuous%20use,recognition%2C%20rather%20than%20relying%20solely%20on%20registration ↑
6. supra ↑
7. Section 5(1) of the trademark act ↑
8. Section 3 of the Trademark Act ↑
9. Section 7 & 8 of the Trademark Act ↑
10. (1991) LPELR-461 (SC) ↑
11. (2004) LPELR-1275 (SC) ↑
12. Section 13 (2) of the Trademark Act ↑
13. https://www.debug-14apr2021.banwo-ighodalo.com/resources/ownership-of-trademarks-in-nigeria ↑
14. https://www.linkedin.com/posts/philipnwosu_the-recent-dispute-between-blord-and-verydarkman-activity 74192896685228769293BPo?utm_medium=ios_app&rcm=ACoAAFsEVfkB1DhX62Nugq0UxcCayg7_Mt1payk&utm_source=social_share_send&utm_campaign=copy_link ↑
15. Section 18 of the Trademark Act ↑
16. Section 20 of the trademark Act ↑
17. Section 20 – 22 of the Trademark Act ↑
18. Section 21 of the Trademark Act ↑
19. Section 23 of the Trademark Act ↑