Trademarks Act

The essence of a “trademark” i.e., a label, name, numeral, signs, etc.) is to establish a connection “in the course of trade between certain goods and a person having the right, either as a proprietor or registered user, to use the mark with or without indication of his identity” on the product to which the mark is affixed. The product labels, which must indicate the origin of the goods, also represent acknowledged quality of some given products and the goodwill of their manufacturers or producers.

Trademarks may be registered or unregistered. Right in an unregistered trademark may be acquired by use and may exist independently of registration in which case there can only be a “passing-off” action for its infringement.

However, the proprietor of an unregistered trademark may oppose the registration of a similar trademark. The basis of this action is a proprietary right not so much in the name itself, but in the goodwill established through usage of the name in connection with the complainant's goods. The party objecting, therefore, must show that the name or mark in question has become associated with his goods, that a reputation or goodwill has attached to them under that name or mark and that use by the person seeking registration of a similar name or mark is likely to cause confusion resulting in damage to the reputation or goodwill of the complainant.

In Nigeria, the Trademark Act indicates what marks are registrable, and provides that a registrable trademark must contain or consist of at least one of the following essential characteristics:

- The name of the company, individual or firm represented in a special or particular manner;

- The signature of the applicant for registration, or some predecessor in his business;

- An invented word or words;

- A word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or surname;

- Any other distinctive mark but a name, signature, word or words other than such as fall within the description in the above paragraphs (i), (ii), (iv) shall, not except by order of a court, be deemed a distinctive mark.

In addition to the above, it should be noted that trademarks are registrable in Nigeria in different classes. The law, for example, provides that, a trademark must be registered for particular goods or classes of goods. The applicant must in his application, state the goods included in each class separately. If the applicant desires to register the same mark for goods falling within the ambits of more than one class, he must make different applications in respect of each class. Each such application is treated for all purposes as separate and distinct.

Whilst, in theory, speculative trademark registrations reflecting no direct relationship for use on specific goods are discouraged, the current universal practice of granting franchise and licensing rights for the use of well known trademarks on diverse goods recommends that proprietors of such trademarks should endeavour, as a protective and anticipatory measure, to effect registration in the country of their proprietary trademarks in diverse classes of registration.