The present laws protecting the registration of trademarks in Nigeria are the Trademarks Act 1965 and Trademarks Regulation 1967 (Cap 436 Laws of the Federation 1990), fashioned after the 1938 United Kingdom Trademark Act.
Those laws only provide for the registration of trademarks used or proposed to be used in relation to goods, classified according to the Fourth Schedule to the Trademarks Regulations 1967, which corresponds to Classes 1 to 34 of the fourth schedule classification of goods under the Nice Agreement.
On March 19, 2007, the Federal Minister of Commerce and Industry in Nigeria signed amendments to the Trademarks Regulations 1967, whose effect will be to allow the registration of Service Marks in Nigeria. The amended Regulations would extend the classification of goods contained in the Fourth Schedule of the Trademarks Regulations 1967 to include service mark protection. The Ninth Edition of the Nice Classification of Goods and Services is to be used.
This action followed recommendations made by the current Registrar of Trademarks, Eric Egbonu, as well as pressure from IP practitioners at large. Based on Sections 42 & 45(1)(b) of the Trademarks Act 1965 (CAP 436 Laws of the Federation 1990), these new rules have taken immediate effect.
It is important to note that the Trademarks Act 1965 has yet to be amended to reflect this development. There are various schools of thought as to whether such an amendment of the Trademarks Regulations without a corresponding Act of Parliament is valid.
Constraints Over the Years
For many years, the IP community has struggled to update laws to be in line with recent developments and international standards. With the signing of the TRIPS Agreement came the added responsibility to update laws within a specified time frame.
There is presently a proposed draft trademark bill purportedly before the National Assembly that would amend the IP laws as a whole and make them TRIPS-compliant. It is pertinent to note that there have been several seminars, workshops and conferences over the years wherein various stake holders have deliberated on the contents of the bill and whether or not it would indeed sufficiently update the Nigerian trademark laws to be in line with international standards.
Many challenges and delays have beset the various attempts to update the trademark laws, from the lack of knowledge about IP in general and trademarks in particular to a lack of commitment and understanding on the part of the legislature, as well as the general delays that are customary to the legislative process. It became imperative that a more pragmatic approach be adopted.
It is against this backdrop that the present initiative arises.
Validity or Otherwise
Since the minister’s announcement, there has been a flurry of activity from the legal practitioners generally and IP practitioners in particular. Different points of view and varied schools of thought are being offered on whether the minister’s actions are valid, as well as the pros and cons of same. Amid all this however, two main issues for deliberation are outlined below as follows:
Section 67(1) of the Trademarks Act 1965 defines a trademark as “a mark used or proposed to be used in relation to goods.” With this provision of the Act expressly limited to goods, it can be argued that it is somewhat difficult to understand how the definition of a trademark can be extended to include services without a change to the substantive law.
Section 45(b) of the Trademarks Act, on which the minister bases his decision, specifically says that the minister has authority to make regulations for classifying goods, “for the purposes of registration of trademarks.” Again the references are to goods alone and to trademarks, whose definition under the Act is limited to goods alone. Here, the minister appears to have based his action on the fact that services can be seen as “intangible goods.” This of course is a novel argument.
An additional, procedural problem arises from Section 45(2) of the Act, whereby such regulations “shall not have effect until published in the Federal Gazette.” No such publication has taken place as this article is submitted.
While an amendment of the substantive law will be welcomed by the IP community in Nigeria, many practitioners have long since decided to adopt a pragmatic approach to the issue of service marks for, among others, the following reasons:
With the country’s economic growth and development of various areas of industry, there is a significant demand for the registration of service marks. Furthermore, there is presently no indication of when the draft Trademark Amendment Bill will be passed into law, especially since this year is an election year and there will be a change in government.
The above notwithstanding, it is felt that there has been some progress in relation to the efforts to amend the substantive law, and if this happens, service marks registered under the present new laws can be accommodated under the new act.
The Registrar of Trademarks is committed and willing to accept and process service mark applications based on the minister’s new rules and is presently making the necessary changes in operations at the registry to accommodate same.
Even if a number of practitioners or rights owners refrain from filing service marks, there will be a number of persons who will proceed with such registrations, and they may be in an advantageous position when the new act is introduced. Indeed, some rights owners and practitioners have already commenced filing service mark applications—which are being accepted and processed at the trademarks registry.
The present development on the issue of service marks is the singular most important development that has occurred in the protection of IP rights in Nigeria for almost a decade.
Thus, although there does indeed appear to be some controversy over the minister’s actions, and perhaps a legal basis for same, our advice to all stakeholders is to err on the side of caution and proceed with the registration of their marks as service marks in Nigeria. A worst-case scenario will be that the marks are invalidated at a later stage; however, that may not be the case and not proceeding may allow your competitors to gain an undue advantage.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.