Trademark opposition is one of the measures that right holders can take to protect their interests and rights from potential abuse or misuse. It is a clearly defined administrative procedure in the registration of trademarks in Nigeria, particularly in relation to pending trademark applications.
In Nigeria, any trademark owner who foresees the damage that may be caused by the registration of a conflicting mark can file a trademark opposition. The opposition must be filed within two months of the publication of the application in the Trademark Journal.
There must be sufficient reasons to file a trademark opposition with the Nigerian Intellectual Property Office. For example:
- Similarity: The trademark is very similar or identical to an already registered trademark.
- Deception or scandal: The mark includes deceptive or scandalous elements or designs.
- Unauthorized use: Trademarks that include the name of a chemical substance, the Nigerian coat of arms, official emblems, or titles such as President or Governor without proper authorization.
- Place Names: The Trademark includes place names.
- Restricted words or symbols: The trademark contains restricted words or symbols.
- Lack of distinctiveness: The trademark lacks distinctiveness.
- Lack of Intent: The applicant had no intention to use the mark.
- Ownership Dispute: The applicant is not the legal owner of the trademark registration.
Documents required to file a trademark opposition request:
- A duly signed power of attorney: This only requires a simple signature, no notarization or authentication is required.
- Applicant/Opponent’s Details: The name, address and nationality of the applicant and opponent must be provided.
- Trademark Information and Proof of Use: Comprehensive information about the opposed trademark and evidence of its use.
- A detailed description of the opposed trademark and clear and sufficient grounds for opposition.
Sections 20(1) and (2) of the Nigerian Trademarks Act provide for the procedure for filing an opposition in writing and paying the prescribed fee. The basic procedure is as follows:
- After identifying the infringing trademark, the opposition petitioner must file an opposition petition within two months of the trademark being published in the Trademark Journal.
- After receiving the objection, the trademark applicant must file an objection reply within one month from the date of delivery of the trademark objection notice. Failure to reply within the time limit will result in the abandonment of the trademark application.
- The objection petitioner has one month after receipt of the objection reply to provide evidence in the form of a statutory declaration.
- Similarly, trademark applicants have one month to submit their own statutory declaration providing the corresponding evidence.
- Both parties will have the opportunity to submit written addresses in support of their respective claims.
- Section 20(5) of the Nigerian Trademarks Act authorizes the Registrar to require any person who files a petition for opposition or, following receipt of such petition, files a defence to opposition to provide security for the costs of the opposition proceedings. Failure to provide such security may result in the Registrar treating the opposition or the trademark application as abandoned.
- After completing these procedural steps, the parties await a hearing scheduled by the Registry and a subsequent decision, which may be appealed to the Federal High Court.
