1. Introduction

Further to your discussion with Andi Daze regarding the proposed protection of your intellectual property rights in London, please find an outline of what will be required.

2. Intellectual Property Rights Protection – Trademark

A Trademark is a unique mark of trade for a business and it protects a brand through designs, colours, symbols or words. Trademarks are registered to protect an owner against competitors from using similar or identical marks. Trademarks are registered in classes of either goods and services or both. Trademarks are registered in Nigeria at the Trademark Registry department with its office Abuja, while the Trademark Act governs the registration, ownership and validity of trademarks in Nigeria.

Generally speaking trademarks are territorial rights (I. e) its registration and requirement varies from nation to nation. To enjoy trademark protection in any country, national protection must be obtained.  

• International Trademark Registration

The World Intellectual Property Organization (WIPO) promotes and administers worldwide intellectual property rights through treaties and convention. This treaty facilitates easy, uniform and cost effective means of registration and further ensures protection and enforcement of rights amongst members.

The Madrid Union is the parent treaty regulating international trademark registration and enforcement amongst member states. The Union has two (2) treaties Madrid Agreement 1891 and the Madrid Protocol 1989.

The Trademark Law Treaty (TLT) was adopted in 1994, and sets out the information nationals of one Member State must supply, and what procedures they must follow, to register trademarks in another Member State’s TM Office.

The Paris convention is also a treaty which borders on the registration of industrial design, patents, utility models, trade names, services marks and geographical indications amongst member states. This convention allows contracting parties enjoy trademark registration and protection independent on one another; however an applicant must comply with a contracting party’s laws to get its mark registered. Nigeria and well as the United Kingdom are parties to the Paris convention.

• Signatories

The Madrid Union generally has a total number of One Hundred and Two Countries (102) as signatories of the Union, Fifty Five (55) of those countries are signatories to the Madrid Agreement while One Hundred and Two (102) are signatories to either the Madrid Protocol or both the Madrid Agreement and Madrid Protocol. Membership in either of the treaties ensures protection as agreed. Some of them include:

• Requirement for International Registration

It is a fundamental requirement that a trademark must be registered in its country of origin before it can be registered in any other country/countries of the world. Unfortunately Nigeria is not a signatory to any international trademark union as such, a Nigerian brand will have to register in Nigeria and then any other country of the world it desires protection.

• Procedure for Registration in United Kingdom

When you register your trademark in the UK, it will be protected in Wales, England, Scotland, Northern Ireland, the Isle of Man and the Falkland Islands.

• Examination – This will include a search at trademark registry upon payment of search fees to confirm availability of the desired name, compliance with requirements such as descriptiveness, distinctiveness, classification and clarity.

Trademarks are registered in accordance with Nice Classification, which is a classification of trademark according to the goods and/or services they present. Trademarks can be registered in as many classes as possible providing they cover the trademark owners proposed goods and/or services.

• Publication –. The filing details will be posted online including the mark itself, goods/services involved, applicant’s name and address, date and number of application, information about priority claim, and the trademark’s representation.
• Registration – After the publication, and if no opposition was filed, certificate of registration shall be issued.
• Duration – Registration takes about five to six months (5-6) months from the stage for search up to the stage of acceptance. As soon as a trademark application is published in the trademark journal, the applicant may proceed to obtain a certificate of registration which is obtained through an application.
• Fees – TBC

• Documents/Information required

1. Name of Mark
2. Device (Logo)
3. Class(es) to be registered
4. Colours
5. Name of Owner and contact information
   • Validity/Term of Protection

Trademarks generally have an indefinite validity; however it is subject to renewal upon payment of renewable fees. In the United Kingdom, trademarks are renewed every ten years (10) while in Nigeria trademarks are renewed every seven (7) years. The trademark must continue use of its mark else once abandoned for a period of three (3) years consecutively another person may use such abandoned mark.

3. Comments

European Union trademark registration is a single application; this can be done via the European Union Trademark which grants trademark protection in the twenty eight (28) country members of the EU. This is an option to widen and extend registration protection of your brand and adding economical value not just in England but in the Europe as a whole.

We hope you find guidance in the foregoing, do not hesitate to contact us for further clarification.

Yours faithfully,

Fatima Inusa

Intellectual Property Advisory

Andi Daze Legal