We recently spoke with Omolara (Lara) Kayode about brand protection in Nigeria. Lara is the founder and managing partner of O. Kayode & Co, a boutique IP law firm with offices in Lagos and Abuja, Nigeria. Lara is a leader in Africa trademark law, and represents the interests of numerous international companies in counterfeit enforcement and brand protection matters.
Thank you, Lara. Why should international companies seek to register their trademarks in Nigeria?
Trademarks are the very embodiment of the nature and character of a product or service. They do not only indicate the source of these products, but speak to quality as well, and offer an assurance of satisfaction to consumers. Trademarks are so important to businesses and brands to the point that they are highly susceptible to theft.
Trademark theft is one form of intellectual property infringement and a common feature in global trade. This is one form of infringement which can hardly be avoided. However, the registration of trademarks in Nigeria is an important step which brand owners must take to better their chances of combatting infringement.
The moment a brand owner decides to undertake business expansion into Nigeria, it is advisable to immediately seek trademark registration – this is so as to ensure adequate protection of his brand name from infringement, and also to acquire not just the prior use rights under common law, but rights accorded by a registration as well.
In some instances, however, trademark registration is made mandatory by virtue of existing regulatory requirements. For example, it is illegal to import, sell, distribute, or manufacture pharmaceuticals in Nigeria without first securing a product registration from the National Agency for Food and Drug Administration and Control (NAFDAC). The same rule applies to food products, medical devices, agro-chemicals, and cosmetics. Also, certain products such as electronics and industrial chemicals cannot be sold or imported into Nigeria without first obtaining the requisite registration from the Standards Organisation of Nigeria. To obtain these product registrations, part of the regulatory requirements includes evidence of a trademark registration, which cannot be dispensed with.
What are the general steps in seeking a trademark registration?
In seeking trademark registration in Nigeria, the following steps must be followed:
- Trademark clearance search: This step is optional. It requires the search of the database of the trademark registry to ascertain whether the proposed mark is available for registration. Although it is optional, it is advisable that the search is conducted as this will reduce the likelihood of the mark being refused upon examination.
- Filing: Trademark applications are filed online through the registry’s online filing portal. After the application has been filed, an Acknowledgement Form is immediately generated, confirming that the application has been received by the registry.
- Examination: The application then proceeds to examination where the Examiners assess the mark for registrability. Where the mark is found to meet registrability requirements, it shall be accepted, and an Acceptance Letter is issued.
- Advertisement: This stage involves the publication of the application in a Trademark Journal. After the Journal is released by the trademark registry, interested parties have a period of 2 months within which to signify interest to oppose the registration of the mark by filing a notice of opposition. Where no opposition is filed within the two-month time frame, the mark shall be considered clear for registration.
- Sealing and Registration: Where no opposition was filed against the trademark application, the next stage shall involve payment of the sealing fee in order that the registration certificate may be processed and issued.
What are the greatest risks to companies who do not seek registration?
One of the greatest risks that companies who do not have registered trademarks face, is a limitation in their enforcement capabilities. This is mainly due to the fact that unregistered trademarks are accorded no statutory protection under Nigerian law. Therefore, such brand owners are limited to filing an action for passing off in the face of infringement.
It also becomes more difficult to prove trademark ownership in the absence of a registration, and the burden of establishing this is shifted to the trademark owner.
Further to the above, the absence of a registration prevents companies from leveraging on trademark ownership, through licensing and other means of IP monetisation in Nigeria
Can a company file one trademark application for several countries in Africa?
We respond in the affirmative. Under the OAPI and ARIPO systems, a single trademark application accords protection of a trademark in several countries. For example, OAPI is an organization for the protection of trademarks in French-speaking African countries. By virtue of the Accords de Libreville and Banjul, there established a common Intellectual Property law and a single Intellectual Property office situated in Yaoundé in Cameroon. A single OAPI application extends to cover all seventeen (17) member states, and it is no longer necessary to seek protection in each individual member country.
So also, ARIPO is a regional IP registration system which applies to mainly English-speaking African countries, and has its office in Harare, Zimbabwe. The ARIPO trademark filing system is regulated by the Banjul Protocol. By filing a single trademark application under the ARIPO system, the Applicant shall have the option of designating states (of the 19 contracting member states) where protection should be extended.
What important considerations should trademark owners keep in mind when seeking to protect their brands in Nigeria?
It is important to ensure that trademark applications are filed through experienced and competent IP lawyers to ensure appropriate guidance is received throughout the process.
Also, an important consideration to make when considering filing trademark application in Nigeria, is to ensure that the mark has marketable potential in relation to the goods or services, i.e. the mark should be capable of appealing to local consumers.
Furthermore, the brand owner should ensure that the mark does not offend public morality, or religious beliefs.
Do you have any other helpful advice for companies regarding Nigeria brand protection?
Brand protection is an integral aspect of upholding brand integrity. It is essential that brand owners engage the services of competent and experienced IP practitioners to help navigate the local IP terrain. It is equally important to establish professional relationships with enforcement agencies, who are at the fore of the fight against infringement.
Obtaining registration of a trademark is one part of the process, commitment to the enforcement of these rights is another. Therefore brand owners must be ready and committed to taking action, and enforce their rights in the event of infringement.
Awareness and sensitisation campaigns are also important as these serve to educate and enlighten the public as to the elements of the products to look out for when making purchases.
Editor’s note: to learn more about protecting your company’s trademark rights in Nigeria, contact Omolara Kayode via Linkedin at https://ng.linkedin.com/in/lara-kayode-a995042