Olusola Mesele

1.            Introduction

Any international discussion of trademarks protection regime today must stem from the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS is administered under the platform of the World Trade Organisation (WTO) and is a detailed and comprehensive agreement establishing minimum standards for protection and enforcement of Intellectual Property. Nigeria is a member of the WTO., but there are still substantial differences and some similarities between the Trademarks Act and TRIPS; some of which this paper shall highlight.

2.            Definition of Trademarks

Article 15 of TRIPS defines a trademark as any sign or combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings. Section 67(1) of the Trademarks Act cap T13 Laws of the Federation of Nigeria 2004 on the other hand, defines a trademark 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, whether with or without any indication of the identity of that person. In 2007, the then Minister of Commerce and Industry, acting under his powers in the Act, extended the classification of marks in the fourth schedule to the Trademark Act from classes 35 to 45, providing for varying services to be registered as trademarks.

3.      Regime for Registration of Trademarks

The Trademarks Act provides for registration in Parts A and B of the Trademarks Register. For registration in Part A, a trademark must have the quality of distinctiveness, i.e. contain at least the name of the applicant (represented in a special manner), or signature of the applicant, or an invented word (s), or a word (s) having no direct reference to the character, quality or geographical name of the goods or any other distinctive mark. While registration under Part B of the Register may only be obtained in the case where the mark is capable of distinguishing goods with which the proprietor is connected in the course of trade from goods in which no such connection exists. Marks that are names of single chemical element or compound, deceptive and/or scandalous cannot be registered under the Trademarks Act. While TRIPS makes no provision for separate registers or regimes, it obliges criteria of distinguishability and leaves other criterion to the discretion of its members.

4.      Third Party Rights in Registered Trademarks

In Article 16 of TRIPS, it is provided that a proprietor of a registered trademark shall have the exclusive right to prevent third party usage of an identical or similar mark in the course of trade in goods and services identical to his, where such use is likely to cause confusion. Under Nigerian law the right is similar, but the difference is that the proprietor has a right to exclusive use of the mark subject to vested rights of earlier users. See Sections 5, 6, 7 and 8 of the Trademarks Act.

5.      Protection of Well-known or Famous Marks

Under the said Article 16 of TRIPS, ‘well known’ or ‘famous’ marks are protectable, without or without registration. The Trademarks Act, however, does not provide for protection of well-known or famous marks and as such, even though Nigeria is obliged to enforce TRIPS provisions and Paris Convention for the Protection of Industrial Property (which also provides for protection of well-known marks), it may be difficult to enforce as these treaties have not yet been domesticated under Nigerian law and so it would appear that the only option for protecting such marks is by the common law action for passing off. See the case of Exxon v. Exxon Nominees [1989] Federal High Court Reports 1. In Section 7 of the Trade Marks Act, however, such well known/famous marks can be protected against their registered counterparts as the Trade Marks Act recognizes the rights of owner or user of unregistered trademarks, which are identical with or nearly resembling a registered trademark. This is provided that the unregistered owner or user can show that he or his predecessor in title has continuously used that trademark from a date previous to the use or registration by the registered user.

6.      Protection of Geographical Indications

Geographical indications identify goods as originating from a particular territory or region in a country, and indicative of quality, reputation or other characteristics attributable to that territory or region. These indications are protected under TRIPS and members could either refuse granting registration or even nullify same where there is a false or misleading indication. While the Trademarks Act does not specifically provide for Geographical Indications, they can be subsumed under Section 43 (1) of the Trademarks Act. the regime of certification marks, i.e. marks that certified as to origin, quality or other characteristic.

7.      Conclusion

The TRIPS Agreement is broad based and applicable to several countries around the world. It represents the uniform standards, predictability and consensus in the use and protection of intellectual property rights as key factors for trade among nations and the entities operating within their respective territories.

While Nigeria has substantially complied the provisions of TRIPS, she is still in default of several key provisions, the most important of which are the provisions for the protection of well-known or famous marks. It is hoped that upon the enactment or amendment of the existing legislation these issue shall be resolved.