An Assessmennt of the Recognition and Protection of Trademark Laws in Nigeria

CHAPTER ONE: GENERAL INTRODUCTION

1. BACKGROUND OF RESEARCH  

Right from the fifteenth century, it had long been a practice in advanced nations of the world to enact laws that see to the regulation, protection and enforcement of rights arising from products of the human intellect. Thus, it is amazing that these nations have leaped toward industrial and commercial advancement before the so called developing nations.

For Nigeria not to be left behind, laws were enacted to protect, control and laws were made to enforce intellectual property. Nigeria is a member of the World Intellectual Property Organisation^[1] (WIPO) and guided by the provisions of the Paris Convention^[2]. Countries that are members of the World Trade Organisation (WTO) are parties to the Agreement on Trade-Related Aspects of Intellectual Property Rights, also known as TRIPS^[3]. TRIPS requires of Members of the WTO to have laws in place that provide for different kinds of Intellectual Property protection^[4].

It is a requirement of the TRIPS Agreement that members of the World Trade Organisation (WTO) must have legislation in place that provides for trademark protection^[5]. TRIPS also provides for certain minimum requirements to which trademark laws must comply. Another important aspect of the TRIPS (Art 2.1) is that it requires of Member States to comply with certain provisions of the 1967 text of the Paris Convention^[6]. This obligation exists irrespective of whether or not the particular state is a member of the Paris Convention.

The TRIPS agreement and Paris Convention made adequate provisions for the protection of intellectual property rights, which trademarks is a part of. It is also pertinent to state that the Nigerian Trade Marks Act^[7] is a replica of the United Kingdom Trademark Act^[8], who is also a member of the World Intellectual Property Organisation (WIPO) and subject to its conventions and treaties.  

Nigeria has put in place legislation for the recognition and protection of trademarks, such legislation include, the Trade Marks Act, Cap T13, LFN, 2004, Trade Marks Regulation 1967^[9], The Merchandise Marks Act^[10], which creates criminal offences and imposes penalties on trademark counterfeiters, the Constitution^[11],the Companies and Allied Matters Act^[12] protects trademarks, the Federal High Court Rules, 2009^[13], The Evidence Act^[14], The High Court of the Federal Capital Territory, Abuja(Civil Procedure) Rules^[15].

However, the various threats to Intellectual Property Rights obvious today in the country are constantly asking questions of whether the laws are recognised at all, improperly enforced or inadequate for protection? It is against this background that this study makes an attempt to look at the level of recognition of these laws, critique the level of protection these laws confers on trademark owners and examine, if truly these laws can ensure maximum and holistic protection of all trademark owners, including service marks and amongst others.

1. STATEMENT OF THE PROBLEM

The legal regime of trademarks protection in Nigeria has proved to be a failure or a mere collection of empty paper works in view of the ugly current trends which have turned nightmares for trademark owners^[16]. Despite the existence of these laws and Nigeria’s proactive participation in many Intellectual Property related convention and treaties, the Nigerian Trademarks Act^[17], has not effectively and completely provide for adequate protection of trademarks in Nigeria. Also, the Act does not make provisions for the protection of service marks, geographical indication and domain name. Domain name affords protection against unauthorised use of identical or sufficiently similar names by third parties. Under the Trade Marks Act^[18], a mark is defined to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof, the Act therefore clearly indicate that the registration of a trademark must be in respect of particular goods, this definition appears restrictive as it rules out service marks and unequally shaped contains or designs. It limits the registration of trademarks to goods while services are excluded^[19].

From the definition provided under the Act, it does appear that the use of the word trademark owner under Nigerian law is restrictive, in that it may only be affixed to goods traded by a proprietor. There, however seems to be a departure from this in the United Kingdom whose 1938 Trade Marks Act, the Nigerian Trade Marks Act is modelled after, by the inclusion of service as an additional vehicle upon which a trademark may be affixed aside from goods. Section 1 of the United Kingdom Act^[20], provides that trademark is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. It further states that “a trademark may, in particular consist of words (including personal names), designs, letters, and numerals or of the shape of goods or their packaging’’

The non-inclusion of services as covered in definition of trademark is clearly one of the shortcomings of the Nigerian Trade Marks Act. The focus on the Nigerian Act is specifically intended to identify and accentuate the problems inherent in the regime of trademark registration such problem includes; (i) no domestication of international trademark treaties, (ii) common searches of trademarks and trade names (Need for a mutual databank for the Trademark Registry and the Corporate Affairs Commission) to enhance adequate protection^[21].

Although, Nigeria is a signatory to the Paris Convention on the protection of Industrial Property, since this international obligation has not been domesticated into local law, they are largely unenforceable in the country^[22]. Also, the provisions of section 12 of the Constitution of the Federal Republic of Nigeria, 1999, as amended states that ‘No treaty between the Federation and any other country shall have the force of  law except to the extent to which any such treaty has been enacted into law by the National Assembly’. This provision of the Nigerian constitution has rendered international treaties and convention unenforceable in Nigeria, except the National Assembly makes them into laws; hence they only have persuasive effect.  For example, the Nigerian Trade Marks Act does not make provisions for the protection of collective trademarks. A collective trademark is a mark capable of distinguishing, in the course of trade, goods or services of persons who are members of any association from goods or services of persons who are not members. It serves as a kind of indication of source of members of a particular group, for instance, geographical names or appellations of origin. Collective marks are recognised under Article 7b of the Paris Convention^[23]. The importance of collective marks as a branding strategy in global trade is increasing and so is its presence in the trademark laws of nations.