By Christian Aniukwu
There is an ongoing trend at the Nigerian Trademarks Registry
regarding recordal of assignment of unregistered trademarks
(pending trade mark applications). Pending trade marks are trade
mark applications that are yet to be registered and issued with
certificates of registration. We have in this paper analyzed the
provisions of the relevant laws in this regard and our submission
is that the Trade Marks Act does not contemplate the recordal of
assignment of pending trade mark application but that of registered
marks. Recordal of assignment is the official registration of an
assignment of a trade mark at the Trade Marks Registry whereof the
assignee of the trade mark is registered in the Trade Marks
Register as the owner/proprietor of the trade mark. Following is
our analysis.
Section 26 of the Trade Marks Act (hereinafter “the Act”)
provides for the assignability of trade marks. The said section
provides:
- (1) Notwithstanding any rule of law or equity to the contrary,
a registered trade mark shall after the
commencement of this Act be assignable and
transmissible either in connection with the goodwill of a
business or not.
(2)
A registered trade mark shall after the
commencement of this Act be assignable and transmissible in respect
either of all the goods in respect of which it
is registered, or was registered, as the case may be, or
of some (but not all) of those goods.
(3)
Subsections (1) and (2) of this section, shall apply in regard to
an unregistered trade mark used in relation to any goods as they
apply in regard to a registered trade mark registered in respect of
any goods, if –
(a)
at the time of the transmission of the unregistered trade mark it
is used in the same business as a registered trade mark; and
(b)
it is assigned or transmitted at the same time and to the same
person as that registered trade mark; and
(c)
it is so assigned or transmitted in respect of goods all of which
are goods –
(i)
in relation to which the unregistered trade mark is used in that
business; and
(ii)
in respect of which the registered trade mark is assigned or
transmitted.
The provisions of the Act are clear to the effect that only
registered trade marks are assignable and transmissible to third
parties save for one exception – we will come back to the exception
shortly. The Act does not contemplate the recordal of assignment of
a pending trade mark application. The reasons for this are
apparent. The fact that a trade mark has been filed is not an
assurance that the trade mark will proceed to registration, or
proceed to registration without an incidence. A pending trade mark
could be refused; opposed successfully and deemed abandoned by the
Registry; or abandoned by the Applicant. In each of these instances
the said trade mark will not proceed to registration. Envision a
situation where a trade mark which falls within any of these
instances have been assigned to a third party and a certificate of
assignment issued to the assignee with a pending application number
– the assignment becomes worthless by virtue of the fact that the
trade mark was not ultimately registered.
Other sections of the Act support the proposition that only the
assignment of registered trade marks ought to and should be
recorded at the Registry.
Section 29 of the Act provides as follows:
Subject to the provisions of this Act, the
person for the time being entered in the register as proprietor of
a trade mark shall, subject to any rights appearing from
the register to be vested in any other person, have power to assign the trade mark, and to give
effectual receipts for any consideration for an assignment
thereof.
Section 30 (1) of the Act provides as follows:
Where a person becomes entitled by assignment or transmission to
a registered trade mark, he shall make
application to the Registrar to register his title, and the
registrar shall, on receipt of the application and on proof of
title to his satisfaction, register him as the proprietor of the
trade mark in respect of the goods in respect of which the
assignment or transmission has effect, and shall cause particulars
of the assignment or transmission to be entered on the
register.
From the provisions above, the recordal of an assignment should
and ought to be for a registered trade mark by a registered
proprietor. The important question now is, when does a trade mark
qualify as a registered trade mark and an applicant qualify as a
registered proprietor. The answer is as provided for under section
22 of the Act reproduced below.
Section 22 of the Act provides as follows:
(1)
When
an application for registration of a trade mark in Part A or in
Part B of the register has been accepted, and either –
(a) the
application has not been opposed and the time for notice of
opposition has expired; or
(b)
the application has been opposed and the opposition has been
decided in favour of the applicant,
the Registrar shall, unless the application has been accepted in
error, register the trade mark in Part A or Part B, as the case may
be.
(3)
On the registration of a trade mark the Registrar shall issue to
the applicant a certificate of registration in the prescribed form
sealed with the seal of the Registrar.
A trade mark becomes a registered trade mark when it has gone
past the opposition period and, either that it was not opposed or
unsuccessfully opposed, registered in the Register of Trade Marks.
The proof that this act has been completed is by the issuance of a
certificate of registration (Section 22 (3)). It follows therefore
that unless a trade mark is registered in the Register of Trade
Marks, a recordal of such assignment cannot be registered by the
Registrar of Trade Marks or recognized by him. What is more?
Regulations 73, 74 and 77 of the Trade Marks Regulations also
reiterate this point. There is only one exception to this
rule. This exception creates a situation where an unregistered
trade mark could be assigned to a third party and still be recorded
at the Registry.
Section 26 (3) of the Act creates a situation where a registered
proprietor of a trade mark seeks to assign both a registered trade
mark and unregistered trade mark to the same assignee. In this
case, such assignment and recordal could be done in group. There
are qualifications to this. First, there must be an assignment of a
registered trade mark alongside an unregistered trade mark to the
same assignee. Secondly, as at the time of the
assignment/transmission of the unregistered trade mark it is used
in the same business as a registered trade mark. Thirdly, the
unregistered trade mark is assigned in respect of goods all of
which are goods in relation to which the unregistered trade mark is
used in that business and in respect of which the registered trade
mark is assigned.
It is therefore our submission, that an assignment cannot be
recorded by the Registry for a yet-to-be registered trade mark. If
an unregistered trade mark is to be assigned and recorded at the
Registry, the qualifications in the Act should be adhered to.
We implore the Registrar of Trade Marks to issue a policy
statement on whether the Registry would continue to record
assignments and issue certificates for unregistered trade marks or
to abide by the strict dictates of the law.
By Christian Aniukwu
There is an ongoing trend at the Nigerian Trademarks Registry
regarding recordal of assignment of unregistered trademarks
(pending trade mark applications). Pending trade marks are trade
mark applications that are yet to be registered and issued with
certificates of registration. We have in this paper analyzed the
provisions of the relevant laws in this regard and our submission
is that the Trade Marks Act does not contemplate the recordal of
assignment of pending trade mark application but that of registered
marks. Recordal of assignment is the official registration of an
assignment of a trade mark at the Trade Marks Registry whereof the
assignee of the trade mark is registered in the Trade Marks
Register as the owner/proprietor of the trade mark. Following is
our analysis.
Section 26 of the Trade Marks Act (hereinafter “the Act”)
provides for the assignability of trade marks. The said section
provides:
- (1) Notwithstanding any rule of law or equity to the contrary,
a registered trade mark shall after the
commencement of this Act be assignable and
transmissible either in connection with the goodwill of a
business or not.
(2)
A registered trade mark shall after the
commencement of this Act be assignable and transmissible in respect
either of all the goods in respect of which it
is registered, or was registered, as the case may be, or
of some (but not all) of those goods.
(3)
Subsections (1) and (2) of this section, shall apply in regard to
an unregistered trade mark used in relation to any goods as they
apply in regard to a registered trade mark registered in respect of
any goods, if –
(a)
at the time of the transmission of the unregistered trade mark it
is used in the same business as a registered trade mark; and
(b)
it is assigned or transmitted at the same time and to the same
person as that registered trade mark; and
(c)
it is so assigned or transmitted in respect of goods all of which
are goods –
(i)
in relation to which the unregistered trade mark is used in that
business; and
(ii)
in respect of which the registered trade mark is assigned or
transmitted.
The provisions of the Act are clear to the effect that only
registered trade marks are assignable and transmissible to third
parties save for one exception – we will come back to the exception
shortly. The Act does not contemplate the recordal of assignment of
a pending trade mark application. The reasons for this are
apparent. The fact that a trade mark has been filed is not an
assurance that the trade mark will proceed to registration, or
proceed to registration without an incidence. A pending trade mark
could be refused; opposed successfully and deemed abandoned by the
Registry; or abandoned by the Applicant. In each of these instances
the said trade mark will not proceed to registration. Envision a
situation where a trade mark which falls within any of these
instances have been assigned to a third party and a certificate of
assignment issued to the assignee with a pending application number
– the assignment becomes worthless by virtue of the fact that the
trade mark was not ultimately registered.
Other sections of the Act support the proposition that only the
assignment of registered trade marks ought to and should be
recorded at the Registry.
Section 29 of the Act provides as follows:
Subject to the provisions of this Act, the
person for the time being entered in the register as proprietor of
a trade mark shall, subject to any rights appearing from
the register to be vested in any other person, have power to assign the trade mark, and to give
effectual receipts for any consideration for an assignment
thereof.
Section 30 (1) of the Act provides as follows:
Where a person becomes entitled by assignment or transmission to
a registered trade mark, he shall make
application to the Registrar to register his title, and the
registrar shall, on receipt of the application and on proof of
title to his satisfaction, register him as the proprietor of the
trade mark in respect of the goods in respect of which the
assignment or transmission has effect, and shall cause particulars
of the assignment or transmission to be entered on the
register.
From the provisions above, the recordal of an assignment should
and ought to be for a registered trade mark by a registered
proprietor. The important question now is, when does a trade mark
qualify as a registered trade mark and an applicant qualify as a
registered proprietor. The answer is as provided for under section
22 of the Act reproduced below.
Section 22 of the Act provides as follows:
(1)
When
an application for registration of a trade mark in Part A or in
Part B of the register has been accepted, and either –
(a) the
application has not been opposed and the time for notice of
opposition has expired; or
(b)
the application has been opposed and the opposition has been
decided in favour of the applicant,
the Registrar shall, unless the application has been accepted in
error, register the trade mark in Part A or Part B, as the case may
be.
(3)
On the registration of a trade mark the Registrar shall issue to
the applicant a certificate of registration in the prescribed form
sealed with the seal of the Registrar.
A trade mark becomes a registered trade mark when it has gone
past the opposition period and, either that it was not opposed or
unsuccessfully opposed, registered in the Register of Trade Marks.
The proof that this act has been completed is by the issuance of a
certificate of registration (Section 22 (3)). It follows therefore
that unless a trade mark is registered in the Register of Trade
Marks, a recordal of such assignment cannot be registered by the
Registrar of Trade Marks or recognized by him. What is more?
Regulations 73, 74 and 77 of the Trade Marks Regulations also
reiterate this point. There is only one exception to this
rule. This exception creates a situation where an unregistered
trade mark could be assigned to a third party and still be recorded
at the Registry.
Section 26 (3) of the Act creates a situation where a registered
proprietor of a trade mark seeks to assign both a registered trade
mark and unregistered trade mark to the same assignee. In this
case, such assignment and recordal could be done in group. There
are qualifications to this. First, there must be an assignment of a
registered trade mark alongside an unregistered trade mark to the
same assignee. Secondly, as at the time of the
assignment/transmission of the unregistered trade mark it is used
in the same business as a registered trade mark. Thirdly, the
unregistered trade mark is assigned in respect of goods all of
which are goods in relation to which the unregistered trade mark is
used in that business and in respect of which the registered trade
mark is assigned.
It is therefore our submission, that an assignment cannot be
recorded by the Registry for a yet-to-be registered trade mark. If
an unregistered trade mark is to be assigned and recorded at the
Registry, the qualifications in the Act should be adhered to.
We implore the Registrar of Trade Marks to issue a policy
statement on whether the Registry would continue to record
assignments and issue certificates for unregistered trade marks or
to abide by the strict dictates of the law.
