Nothing is more important in business than developing a distinct identity and generating revenue from the selling of goods or services [“products”]. This is why the importance of trademarks for cannot be overstated.

For starters, trademark refers to a number of distinct identifiers, including trade names, product names, individual names, domain names, words, signatures, phrases, logos, symbols, colours, hashtags, sounds, or even scents. It serves to distinguish a brand’s products from those of other brands, whether an individual or a corporate entity. A trademark is an intangible asset with considerable worth as it can be used to leveraged for business turnover through a variety of strategies, including licensing, assignment, franchising, merchandising, divesting, merger, acquisition, or any other lawful means of business ownership and control.

In Nigeria, registering a trademark is a prerequisite for its proprietor or registrant (trademark “owner” – individual, group of individuals or corporate entity) to enjoy any right or privilege associated with it. The Trademark Registry, headed by the Trademark Registrar, is responsible for trademark registration. Under sections 5 and 6 of the Nigerian Trade Mark Act 2004, trademark registration provides the owner with the sole right to use the trademark, excluding everyone else who is not a licensee, a previous continuous user, or someone covered under section 8 of the Act as a bonafide user of the name, address, or product description. The exclusive right of use of a mark afforded by trademark registration also empowers the owner to restrain unpermitted users of the trademark and take legal action to recover any profit or damages resulting from unauthorised use. This is what is generally referred to as “legal protection”.

To be eligible for registration in Nigeria, a trademark must meet the requirement of “distinctiveness”, which denotes that it should be different from other trademarks or words and should identify a product as originating from a specific brand. Not all names, words, signatures, phrases, logos, symbols, colors, hashtags, or sounds are eligible for registration. Arbitrariness is a critical aspect of distinctiveness, meaning that the trademark should have no connection to the product it represents or protects, such as the use of the name “Apple” for technology-related products. Fanciness is also an essential element of distinctiveness, connoting that the trademark must be a newly coined or invented phrase. Distinctiveness is the fundamental element that sets a trademark apart from other trademarks.

Under Nigerian trademark laws, trademarks are registered in Part A or Part B of the Trademark Register. For a trademark to be eligible for registration in in any of the Parts, it must either be inherently distinctive [capable of distinguishing itself without having been used] or distinctive on use [acquired distinctiveness through use]. This means that, before registration or after registration, the proposed trademark must be able to distinguish itself from other products registered in a particular class or generally. It is important to note that trademarks are registered in classes and are only protected within the registered class and not extended to products registered outside the class.

However, certain types of trademarks are unlikely to be approved for registration because they lack distinctiveness. These include trademarks that describe the features, functions, or qualities of a product [unless the word has a secondary meaning and is not a chemical element or compound used to describe a chemical product], generic words, deceptive or scandalous marks, marks contrary to public policy and morality, geographical names, and single surnames. Additionally, trademarks that are identical or confusingly-similar to an existing trademark in the same class are unlikely to be registered. Descriptive trademark may, however, be registered if the name sought to be registered has acquired secondary meaning through use. Secondary meaning is acquired when the public, as a result of consistent use of a trademark, associates the word with a particular product other than its literal/primary meaning. An example is still “Apple” which was initially used to describe the fruit, but it has since acquired secondary meaning as a trademark for computer products and related services. [To clarify the context, “hotel” will be a generic word for an accommodation and leisure brand, “penis” would be considered contrary public morality, “oxygen” and “water” are chemical element and chemical compound respectively, “microsoft” is a brand that is suggestive of a brand that manufactures or sells computer-related products.]

On the flip side, a word or name that is a prefix or suffix of a geographical term being registered as a trademark, and a trademark that is suggestive of the product, are more likely to be accepted for registration, provided that certain conditions are met. In the case of a prefix or suffix of a geographical term, the applicant must disclaim any exclusive use of the geographical term. For example, if an applicant seeks to register the trademark “Voice of Africa” in Class 5, they must disclaim the word “Africa” to obtain registration for “Voice.” In the case of a suggestive name, the owner must demonstrate that the name has been used for a long period of time and has acquired distinctiveness as a result.

Not having inherent distinctiveness or inherent distinctiveness on use is a basis for the Trademark Registrar to reject an application for registration. Moreover, trademarks that lack distinctiveness or only become distinctive through use may be challenged or opposed by any Nigerian or non-Nigerian during registration. If a non-distinctive trademark is registered, its lack of distinctiveness can be a basis for seeking to have the trademark removed from the register for being entered on the Trademark Registry “without sufficient cause”.

Trademark distinctiveness is crucial because trademarks with higher distinctiveness are afforded stronger protection under the law for being unarguably worthy of registration. When applying to register a trademark, it is important to consult with an Intellectual Property Lawyer to ensure a smooth registration process and reduce the risk of having the trademark invalidated post-registration.

To sum up, we strongly recommend seeking the assistance of an Intellectual Property Lawyer to conduct a name search for your proposed trade name or the name you plan to register with the Corporate Affairs Commission [CAC]. This is necessary to avoid infringing on an existing registered trademark, which could result in lost revenue and profits for the trademark owner. It is important to note that registration with the CAC does not confer exclusive rights to the use of a name and does not protect against lawsuits for trademark infringement. Therefore, conducting a thorough name search is a prudent step to take to safeguard your business interests and avoid legal disputes.