A Call For Reform On The Trademark Act By Julius Ebaghelu Inegbedion Esq.

The Trademarks Act Cap T13 Laws of the Federation of Nigeria
(Herein after referred to as the ‘Trademarks Act LFN 2004’) is made
up of 13 Parts 69 sections and two (2)
schedules.

A notable feature of the Trademark Act is hidden in the
procedure for registration. The Act calls for the advice of the
Registrar to be sought after by the applicant who wishes to
register a mark to determine if the intending mark is
distinguishable. This is the first step before any application can
be made. This step is irrelevant as the Act further provides for an
application to either be refused, accepted, or accepted subject to
amendment by the Registrar. The reason being that if the Registrar
can refuse a mark on the grounds of it being indistinguishable, or
demand for its alteration, there is no need for the advice of the
Registrar to be sought to determine its distinctiveness.

Furthermore, as stated earlier, the Trademark Act provides that
“the Registrar may refuse the application, or may accept it
absolutely or subject to such amendments, modifications, conditions
or limitations, if any, as he may think right”. The Act does not
provide the grounds under which an application to register a mark
may be refused. The implication of this is that the power of the
Registrar to accept any application is completely discretionary. It
should be noted that to ensure adequate fairness, if the Registrar
is given power to accept or refuse an application, it is reasonable
that there should exist a boundary or restriction by which the
Registrar can either accept or refuse an application. In my
opinion, the absence of this may tend to pave the way for corrupt
practices easily. Furthermore, if for instance, certain grounds by
which the Registrar can refuse an application are provided for by
the Act, it reinforces the decision of the Registrar on any
application brought before him, and in the occurrence of the
decision of the Registrar being challenged before any competent
court of law, it suffices to say that the stipulated grounds would
evidence the reasons behind his decisions.

With modernization, there is the question on the implementation
of the provisions of the Act with respect to Trademark on the
internet. Honestly speaking, interpreting the provisions of the Act
to apply to trademark on the internet tends to be highly
cumbersome. This is because of the nonexistence of provisions in
the Act expressly addressing the topic. This ground as such also
calls for the amendment of the Act to include such provisions
covering registered trademarks online.

With respect to the international sphere, the Act provides that
any person who has applied for protection for any trade mark in a
convention country or his legal representative or assignee shall be
entitled to registration of his trade mark under this Act; and the
registration shall have the same date as the date of the
application in the Convention country. It is pertinent that marks
or emblems of international bodies of which Nigeria is a member, be
protected. But there are puzzling questions. Is it expedient for
trademarks containing the abbreviations or emblems of international
bodies of which Nigeria is a member, to be registered in other to
be protected in Nigeria? The Act has no provision to provide an
answer to this; nor does it mention international bodies or their
emblems and is therefore silent on the subject.

It is pertinent that the trademarks or emblems of international
bodies or organization of which Nigeria is a member be protected by
the Trademark Act, with such mark or emblem deemed registered under
the Act.

In conclusion, a critical review of the Trademark Act does show
that the Act needs so much amendments that the implementation of
the Act under the current Nigerian Economy seems problematic. With
such scanty provisions, the continuous use of the Act does bring
shame, and of course tends to place a lot of responsibilities on
the court to therefore determine a justiciable end to cover matters
which are not covered by the Act.

The Trademarks Act Cap T13 Laws of the Federation of Nigeria
(Herein after referred to as the ‘Trademarks Act LFN 2004’) is made
up of 13 Parts 69 sections and two (2)
schedules.

A notable feature of the Trademark Act is hidden in the
procedure for registration. The Act calls for the advice of the
Registrar to be sought after by the applicant who wishes to
register a mark to determine if the intending mark is
distinguishable. This is the first step before any application can
be made. This step is irrelevant as the Act further provides for an
application to either be refused, accepted, or accepted subject to
amendment by the Registrar. The reason being that if the Registrar
can refuse a mark on the grounds of it being indistinguishable, or
demand for its alteration, there is no need for the advice of the
Registrar to be sought to determine its distinctiveness.

Furthermore, as stated earlier, the Trademark Act provides that
“the Registrar may refuse the application, or may accept it
absolutely or subject to such amendments, modifications, conditions
or limitations, if any, as he may think right”. The Act does not
provide the grounds under which an application to register a mark
may be refused. The implication of this is that the power of the
Registrar to accept any application is completely discretionary. It
should be noted that to ensure adequate fairness, if the Registrar
is given power to accept or refuse an application, it is reasonable
that there should exist a boundary or restriction by which the
Registrar can either accept or refuse an application. In my
opinion, the absence of this may tend to pave the way for corrupt
practices easily. Furthermore, if for instance, certain grounds by
which the Registrar can refuse an application are provided for by
the Act, it reinforces the decision of the Registrar on any
application brought before him, and in the occurrence of the
decision of the Registrar being challenged before any competent
court of law, it suffices to say that the stipulated grounds would
evidence the reasons behind his decisions.

With modernization, there is the question on the implementation
of the provisions of the Act with respect to Trademark on the
internet. Honestly speaking, interpreting the provisions of the Act
to apply to trademark on the internet tends to be highly
cumbersome. This is because of the nonexistence of provisions in
the Act expressly addressing the topic. This ground as such also
calls for the amendment of the Act to include such provisions
covering registered trademarks online.

With respect to the international sphere, the Act provides that
any person who has applied for protection for any trade mark in a
convention country or his legal representative or assignee shall be
entitled to registration of his trade mark under this Act; and the
registration shall have the same date as the date of the
application in the Convention country. It is pertinent that marks
or emblems of international bodies of which Nigeria is a member, be
protected. But there are puzzling questions. Is it expedient for
trademarks containing the abbreviations or emblems of international
bodies of which Nigeria is a member, to be registered in other to
be protected in Nigeria? The Act has no provision to provide an
answer to this; nor does it mention international bodies or their
emblems and is therefore silent on the subject.

It is pertinent that the trademarks or emblems of international
bodies or organization of which Nigeria is a member be protected by
the Trademark Act, with such mark or emblem deemed registered under
the Act.

In conclusion, a critical review of the Trademark Act does show
that the Act needs so much amendments that the implementation of
the Act under the current Nigerian Economy seems problematic. With
such scanty provisions, the continuous use of the Act does bring
shame, and of course tends to place a lot of responsibilities on
the court to therefore determine a justiciable end to cover matters
which are not covered by the Act.