A cancellation proceeding is a post-registration remedy and as such can only be brought after a trademark has been registered.
Section 38 of the Trademark Act allows any person who can establish sufficient interest to the satisfaction of the Registrar or the Federal High Court to commence cancellation proceedings in Nigeria. The said party must be able to show that it has a legal interest.
The general grounds for bringing cancellation proceedings
- Lack of distinctiveness of the mark.
- Non-use, that is, the mark was registered without any bona fide intention to use the mark and there has been no use of the trademark up to one month before the date of the application or the mark has not been used for a continuous period at least five years.
- The mark is generic; misleading or deceptive.
- The mark is contrary to public policy.
- The mark was registered in bad faith.
- The mark is a ‘well- known’ or ‘famous’ mark.
- The mark consist of a geographical indication.
- An earlier application or registered mark has been made to the trademark registry.
Steps to take
- Send a cease and desist letter to the other side to stop the use of the mark; where they do not comply,
- Commence revocation proceedings in the Trademark Registry or the Federal High Court, Nigeria.
Franca Onukaire – PMS- PRESH & MAL SOLICITORS