Failure to file a counter-statement in trademark opposition proceedings in Nigeria.
Trademark registration in Nigeria is a process that is initiated by the applicant filing an application in any of the 45 class(es) under which his goods or services may be registered. Once the application is accepted by the Registry after an examination has been conducted, an acceptance letter is issued to the applicant and thereafter, the mark is published on a Trademark Journal. The acceptance of the mark by the Registry is not an evidence that the mark will be or has been registered. This article outlines how an applicant may still lose their trademark registration for failing to respond to any opposition by third parties.
Under Section 20 of the Nigeria’s Trade Mark Act, any person may, within two months from the date of publication of a mark in the Trademark Journal, give notice to the Registrar of opposition to the registration.
This notice is required to be given in writing and in a prescribed manner. The stages in opposition of trademark under the Act are simplified as follows:
- An opponent gives notice to the Trademark Registrar in a prescribed manner within two months from the date of the publication. The notice must state the grounds of the opposition. No extension is permitted under the Act.
- The Registrar shall then serve the notice of opposition on the applicant. There is not specific period within which the Registrar shall serve the Notice.
The applicant may do one of two things:
- Filing a counter-statement and setting out the grounds upon which he/she relies on filing his/her application. The applicant must do this within one month after the date of receipt of the notice of opposition.
- Choose not to respond to the notice of opposition. Where the applicant chooses not to file a counter-statement, the trademark application is treated as having been abandoned.
Where an applicant files a counter-statement, the Registrar shall furnish the opponent a copy of the counter-statement and may thereafter schedule a hearing to decide whether the application for registration should be permitted.
The law on abandoned trademarks is strict and does not admit of any exception or discretion of the Registrar. The effect of failure to file a counter-statement within the permitted period of one month is that the application is dead and buried. It cannot be resurrected. No further action is required either by the opponent or the Registrar to establish the abandonment. The usual practice of issuing a notice of abandonment by the Registrar has been held to be superfluous and unnecessary.
In the case of Visa International Service Association vs Visafone Nigeria Limited & Registrar of Trademarks (unreported. Appeal No: CA/L/622/2017), the Nigeria Court of Appeal held that failure by an applicant for trademark registration to file a counter-statement within one month of service on him of the notice of opposition will result in the trademark application being automatically deemed as abandoned. The court had the unique opportunity to establish the law on this issue and it did so when it held per Kolawole JCA thus:
“My Lords, I am of the view that, this Judicial labour being expended here is worth the significance of attempting a modest development of this rudimentary concept of law. ‘’Abandonment’’ as a concept as provided for in section 20(3) of the Act, in my view, does not require it to be activated at either issuance of notices to that effect by the Registrar … or any letter at all reflecting an application as being abandoned. It will suffice that once the timeline prescribed by the Act has elapsed, the concept of “Abandonment” automatically becomes activated…”
By this above decision of the Court of Appeal, it is clear that failure by an applicant to file a counter-statement in an opposition proceedings puts an end to such application for trademark registration. Neither the applicant nor the Registrar can extend, reopen or review the application.
Conclusion
The provision of Section 20(3) of the Trademark Act is of strict application and does not admit of any discretion. The effect of failure by an applicant to file a counter-statement within the period of 30 days stipulated by the Act means that the applicant has automatically abandoned the application. Noting else is required to establish the abandonment and that is the end of the matter.
Dilibe Chinedu Ifezue – SAPPHIRE IP SERVICES
