In Nigeria, trademarks are afforded legal recognition by registration and by their status of well-known marks. Despite this status, unregistered well-known marks stand a half chance of enforcement when infringed upon no matter how popular the mark has gone to be over the years. This is the first rider. The second is that even in the truth that trademarks ought to be registered to enjoy legal backing, not every trademark is registrable by the Trademark and Patent Registrar who is the de jure head of the Trade Mark and Patent Registry in Nigeria. The extant legislation on trade mark in Nigeria, the Trade Marks Act, has allowed for certain categories of marks, styles, logos and names to be registered as trademarks in the country, be it trademark for a product or one for the service a business construct renders. It presupposes, then, that not every mark, name, logo, their plural or their combination submitted by a business enterprise will be accepted for registration. And where a trademark passes the litmus test of registration and enjoys the protection of the law, the trademark registrant in whose favour the trademark is protected is bestowed with the exclusive right to use the trademark to the exclusion of everyone else to a certain degree and period. In this article, it is the aim to provide an overhauling understanding of trademark, discuss the requirements and consequences of trademark protection, then point out the limits of this protection within the Nigerian jurisdiction.
WHAT TRADEMARK IS
First defining the concept of trademark from the negative is a preferred foundation to a deep understanding of the scope of the subject matter. What then is trademark not? Trademark is not a registered business name, is not limited to goods and is not necessarily a ‘mark’ in the strict sense of the word. Now, the Nigerian Trade Marks Act defines trademark  as a mark used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person. And even though this Act facially limits the scope of trademark to goods or products, it is a fact that trademark in Nigeria covers services too. The reasons follow suit. First, the definition afforded by the TRIPS Agreement of the concept in includes services.  Secondly, the Nice Classification of Goods and Services  which extends goods to include services in classes 34-45, has been adopted by Nigeria from effect from the 19th day of April 2007 pursuant to regulation made under section 42 and 45(1) of the Trademark Act, although the country is not signatory to the treaty. Trademark, therefore, is a word, sign, shape, design, colour, their plural or any combination thereof capable of distinguishing or which actually distinguishes the goods or services of a particular business owner from that of others.
Trademark is generally a compound word that can only be protected in a category. A trademark may either be protecting a product or a service. When it protects a product, it is a ‘trade mark’ and often called a ‘service mark’ when the protection specifically covers a service. Trademarks, whether a trade mark or a service mark, are often registered using trade names. Trade names are names under which goods are sold or services are rendered, and which by established usage have become known to the public as indicating that those goods or services are of a particular person. Trade names do not necessarily need to be established. They are otherwise known as brands and are not necessarily same with the name by which a company is registered under the Corporate Affairs Commission (CAC). While brands like ‘Audi’, ‘Cocacola’, ‘Visafoam’, ‘Samsung’, are among popular trade marks due to the goods they sell, ‘Google’, ‘MTN’, ‘Jiji’ and ‘Gotv’ are established examples of service marks.
Trademark can be established by registration or long and well-known use. Either ways, once a trademark has been established, the registrant has exclusive use of the mark and is protected from every act of infringement which will include using or registering a name, mark or slogan identical or closely resembling that which is already established without the proprietor’s use, and the use causes or is likely to cause deceit in the minds of the customers who may confuse the infringing trademark for that of the established owner or registered user.  Where a trademark is established, it becomes protected.
PROTECTION OF TRADEMARK
At the mercy of repetition, protection of trademark is the right to preclude others from the use of the trademark through adjudication. The protection ensures that the plaintiff is paid damages, or the defendant is given an injunction order, is ordered to deliver up the trademark for destruction or to account for profit made by use of the trademark for the benefit of the plaintiff. These reliefs are called remedies and only the Federal High Court is vested with the jurisdiction to grant them,  subject to the right of appeal. The power conferred on the Registrar over trade mark infringement disputes by sec.47, 55 and 57 of Trade Marks Act is overwhelming and is arguably inconsistent with the provision of section 251(f) of the Constitution and should be declared null and void by reason of the inconsistency in accordance with section 3 of the said Constitution.
Trademark can be protected under the Act and at common law. Trademark protection under the Act is not an automatic right and does require the proprietor to file special paperwork and registration, as is the case for patent. This paper work is the registration process through the Registrar of Trademarks. This resounds that the protection of trademark under the Act is guaranteed only after its registration.  Without registration, it is merely a business name 
Trademark registrable under the Act may be registered in either Part A or Part B of the register. For a trademark to be registered in Part A, it must be distinctive at the point of registration and ‘distinctive’ has been interpreted to mean that the mark must have no direct reference to the character or quality of the brand, must not be a geographical name or surname by its ordinary meaning, and must be inherently adapted.  In Liggett & Myers Tobacco Ltd v. Registrar of Trademark , it was held that a word (Chesterfield) does not become a geographical name simply because a place on earth is called by it. The word must ordinarily connote a geographical name to not be registrable in Part A. A trademark is not distinctive if it is generic and has a general connotation, and therefore not capable of protection and registration in Part A. Quick examples are the words ‘Chair’ and ‘Glass’ submitted for registration. These words are generic and cannot be registered in Part A unless the proprietor has made the name so distinctive by reason of their well-known status long before their application for registration.
On the second part of registration under the Act, a trademark may be registered in Part B of the register if it is capable of being distinctive in use. A trademark rejected for registration in Part A may be registered in Part B.  While registration in Part A requires that the trademark be distinctive before the application for registration, all that is required for Part B is the likelihood of being distinctive while in use.
That said, whether in Part A or B, trademark protection is for an initial period of 7years and renewable periods of 14 years after the expiration of each registration.  Between the period of the expiry of one registration to the renewal of the next, the trademark may be removed from the registry if the Registrar deems fit and during this period, the trademark loses the right of protection. Generally, where the trademark has been removed from the register for more than one year, any application for renewal will fail as the application will be received as a fresh application entirely which will coat the trademark with 7years protection as against 14years. 
It should be noted that registration under the Act may be done by the proprietor or the registered user. A proprietor is the registered owner (or owners as in the case of registered joint proprietorship) of the trademark who has the right to assign or transfer the trademark to whoever he desires.  A registered user, conversely, is a permitted user who does not enjoy the rights of assignment or transmission.  He still possesses the right to institute an action against infringement within two months of the proprietor’s knowledge of the infringement and his refusal or neglect to act appropriately. 
At common law, trademark is protected by the tort of passing-off where the trademark is not required to be registered. All that is required is well-known or established use.  In protecting a trade name under passing-off, the requirements for proof are the brand or trade name’s goodwill, the defendant’s misrepresentation which led to customer’s confusion and an inherent loss suffered by the plaintiff. Every action under passing-off is actual.
LIMITS TO TRADEMARK PROTECTION
Generally, all kinds of trademarks under the Act are registrable by the Trademark Registrar in Part A or Part B of the register. However, certain trademarks or proposed trademarks are not registrable and thus not capable of being protected. These are:
- Identical Trademarks.
No trademark which is similar to an already existing or registered trademark in respect of the same goods can be registered unless it falls within the exception of honest concurrent use  or other special circumstances such as ownership of a mark before use or registration.  Of course, identical trademarks may be registered where both brands operate in different classes of goods or services. That way, confusion in the minds of the customers will be absent.
- Deceptive or Scandalous Trademarks.
Any trademark which is capable of cajoling customers into believing the goods or services of one person are those of another and trademarks that are contrary to public policy or morality or have scandalous designs are not registrable.  As applied in Ghazillian’s Trademark Application,  the Trademark “Tiny Penis” for a clothing line was refused for being offensive to moral principle of right.
- Names of Chemical Substances.
Words which are the accepted names of a single chemical element or chemical compound are restricted from registration in respect to a chemical element as a product under the Act.  The exceptions are when the chemical is a ‘mixture’, and when the word, be it an element or a compound, is used to denote only a brand or trade name that is not related to chemical elements.  This exception, it is argued, cannot be extended to service marks.
SOME REPUTABLE TRADEMARK DISPUTES IN NIGERIA
Trademark disputes in Nigeria over the years have expanded from infringement action for registered trademarks and registration of trademark with the Trade Marks Registrar to passing-off actions.
- In Elebute & Anor v. Ogunkua,  the plaintiff trademark was not registered. Still, he brought an application for an interim injunction to restrain the defendant from using the said trademark pending the determination of the substantive suit. The Federal High Court, in refusing the application, held, in reference to section 3 of the Trade Marks Act, that a person can only institute proceedings to prevent or recover damages for infringement of a trademark that is registered.
- In yet another matter of Hondret & Co Ltd v. Registrar of Trademarks,  the Applicant applied to the Registrar to register the trademark ‘Rose fresh Air Freshner’ but was refused by the Registrar whose reasons were that the name conflicted with an earlier identical mark whose application for registration was pending. The Federal High Court upheld the appeal and stated that section 13(1) of the Trademark Act can only apply where the mark sought to be registered conflicts with a mark which is already registered and not when both marks are pending registrations. It also stated that since the Registrar found no fact to the effect that the trademark of the Applicant was likely to receive or cause confusion, it was wrong to have refused the registration. The Registrar was accordingly ordered to accept the trademark for registration.
- In the case of A.B. Chami & Co v. W.J. Bush & Co Ltd,  the plaintiff sued the defendant for infringement of its trademark. The defendant’s defence was that the trademark had not been renewed for thirty years and the renewal by the plaintiff was illegal. The court held that a trademark which had not been renewed for thirty one years after registration was held to have been validly renewed since the trademark had not been removed from the register and there was nothing illegal about the renewal by the plaintiff.
- In the receptive passing-off case between Niger Chemists Limited v. Nigeria Chemists,  the plaintiff sold drugs as Chemists in Onitsha, Eastern Nigeria and the defendant opened shop on the same street and started the same line of business of dispensing drugs. On being sued, the court granted an injunction against the defendant on the ground that their use of the name ‘Nigeria Chemists’ was intended to deceive the members of the public to believe that they had a relationship of some sort with Niger Chemists.
It is gleaned that trademarks that are not registrable under the Act cannot be protected and thus unenforceable in an alarm for infringement. Even marks which, though registrable, remain unregistered cannot enjoy the gracious hands of protection under the Nigeria’s Trademark Act, unless the plaintiff buys the common law option of passing-off and fulfills the conditions therein; for registration is a condition precedent for the institution of an action for infringement of a Trademark under the Act.
In enforcing trademark rights under the Act, all that the plaintiff need show is that he is the proprietor or registered user of the trademark, his registration still subsists, the trademarks are similar, the goods or services are of the same class, and the infringement does not come within any of the exceptions permitted under the Act. The exceptions which include consented use of the trademark, concurrent registration of the trademarks, marks had by persons before use or registration of the mark by the proprietor, bona fide use of a person’s name by the person, bona fide use of the characteristic description of a person’s goods by the person. 
Indeed, trademark protection in Nigeria is plausible, except for the adjudicatory powers wielded on the Trademark Registrar in trademark infringement cases.  This is inconsistent with the Constitution and calls for a repeal of the Act.
 “TMA”, Cap. T13, Laws of The Federation of Nigeria (“LFN”) 2004
 Ibid at s. 67(1)
 TRIPS is an acronym for Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the TRIPS Agreement is a treaty between all member States of the World Trade Organization (WTO) whose current number is 164, with Nigeria being counted. Effective from January 1 1995, the Agreement is a minimum standard agreement which allows members to provide more extensive protection of intellectual property subject to the wish of the nation State.
 The International (Nice) Classification of Good and Services otherwise known as the Nice Classification (TCL) was established by the Nice Agreement in June for the purpose of the registration of marks.
 S. 5(2) of the TMA, supra
 S. 251(f) of the CFRN 1999 as amended
 S. 3 of TMA, supra
 See Elebute & aAor v. Ogunkua (1990) F.H.C.L 201
 S. 9 of TMA, supra
 All N.L.R. 540
 Ibid at s. 10
 Ibid at s. 23(1) and (2)
 Ibid at s. 23(4)
 Ibid at s. 18(1)
 Ibid at s. 33(5)
 Ibid at s. 33(4)
 Ibid at s. 3
 Ibid at s. 13(1) and (2)
 See the case of Seven-up Company & Anor v. Warri Bottling Company Ltd (1980) F.H.C.L. 183
 S. 11 of the TMA, supra
 R.P.C. 628
 S. 12(1) of the TMA, supra
 Ibid at s. 12(1) and (2)
 Supra at n.8
 F.H.C./L. 203
 (1996] F.H.C.L.R. 784
 All N.L.R. 180
 Babafemi F. O. (2007). Intellectual Property: the Law and Practice of Copyright, Trade Marks, Patents and Industrial Designs in Nigeria (1st ed.). Justinian Book Publishers, pp. 222-229.
 Secs. 47, 55 and 57 of the TMA, supra.
ABOUT THE AUTHOR
A progressive Nigerian Attorney with specialty in Energy and Environmental Law, Intellectual Property and Technology Law, and Litigation. He is a scholar who prides in writing, publishing and editing works.
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