Revocation of trademarks refers to the legal process of cancelling or removing a registered trademark from the official Trademark Register by the Registrar of Trademarks or the court. In essence, the registered trademark ceases to enjoy protection under the law and the trademark owner loses the exclusive right to use that mark commercially.

In Nigeria, it is possible to apply for the cancellation of a registered trademark based on any of the grounds provided by law and upon satisfaction of some conditions as outlined by the Nigerian Industrial Property Office (NIPO). The main grounds for applying to revoke a trademark in Nigeria are usually for non-use and non-renewal of the trademark.

Section 31(1) of the Trademarks Act of Nigeria, 2004 (the Act) states that a registered trademark can be removed from the Register of Trademarks in relation to specific goods for which it is registered. This removal can be initiated through an application made by any person who establishes sufficient interest to the satisfaction of the Registrar or the court. The Act stipulates various grounds for applying to the Registrar of Trademarks for the removal of a registered trademark.

Grounds for Revocation of a Trademark in Nigeria

The grounds for removal of a registered trademark include non-use, non-renewal, failure to observe a condition precedent, where the registration was obtained by fraud, etc.

Non-use:
The Act allows a trademark to be revoked if it has not been used. One ground for cancellation is when the trademark was registered without any genuine intention to use it. In this case, no real use of the trademark should have occurred up to one month before the revocation application.

The person seeking revocation must prove that the owner never intended to use the trademark and that it has not been used during that time.

Another ground for removal is when the trademark has not been used for a continuous period of at least five years, up to one month before the application date. Even if there was an initial genuine intention to use the mark, it can still be revoked if it remains unused for five years and one month in relation to the registered goods or services.

Exceptions to Revocation on the Ground of Non-Use

The Act provides for exceptions or defenses to the cancellation of trademarks on the ground of non-use.

Bona fide Use:
If the trademark has been used in good faith by the proprietor for the goods it is registered for, it is exempt from removal due to non-use. This use must fall within the relevant period before a revocation application can be made.

However, this exemption does not apply if the applicant seeking revocation has been allowed under Section 13(2) of the Act to register an identical or similar mark for the goods, or if the tribunal permits such registration despite prior use.
Special Circumstances:
Special circumstances that prevented the proprietor from using the trademark also protect against revocation for non-use. Non-use caused by factors beyond the proprietor’s control, rather than an intentional decision to abandon the trademark, is a valid defense.

For example, if a government ban restricts an industry such as cryptocurrency, the trademark for that business may be unusable during the ban. This situation is considered a valid exception since the trademark was not deliberately abandoned.
Protection for Well-Known Marks:
Well-known trademarks registered across various goods classes cannot be revoked for non-use in Nigeria because of their popular status. This protection applies even if the mark isn’t used for all registered classes.

A highly popular mark may be exempt from removal if the proprietor applies and the Registry acknowledges it as a well-known mark. This ensures genuine trademark rights are preserved fairly.
Failure to Observe a Condition Precedent:
A registered trademark can be revoked if it is shown that the proprietor of the relevant mark or goods failed to comply or observe a condition precedent in relation to the trademark.

In defense, a proprietor can provide evidence of compliance or fulfilment of the stipulated conditions to avoid removal of the trademark.
Non-Renewal of Trademark:
The registration of a trademark in the Register of Trademarks does not guarantee perpetual protection of the mark. Registration is valid for an initial period of seven years in Nigeria, with the possibility of renewal for subsequent fourteen-year periods.

The non-renewal of an expired trademark may lead to the cancellation of the mark upon the application of an interested party.

A defense to an alleged non-renewal is proof that the Registrar did not issue the required statutory notice for renewal.

Other grounds for removal include giving inaccurate or misleading information regarding a trademark when obtaining or maintaining a trademark registration, where the trademark registration was obtained by fraud, where the trademark is likely to cause confusion, where it is scandalous or contrary to law and morality and where the trademark is found to be infringing on the rights of another party.

Procedure for Revocation of a Trademark in Nigeria

An application for the cancellation of a trademark in Nigeria can be made to either the Registrar of Trademarks or to the Federal High Court.

Where it is made to the Registrar, it shall be in the prescribed form and accompanied by a statement of the applicant’s interest, relevant facts upon which the case is founded, and reliefs sought.

Where the applicant is not the registered proprietor of the trademark in question, copies of the application will be provided by the applicant and sent by the Registrar to the registered proprietor.

The defendant is entitled to file a Counter-Statement or Defense to the applicant’s claims. The applicant may file a Reply if necessary.

In revocation proceedings before the Registrar, evidence is typically provided through statutory declarations unless the Registrar directs otherwise. In any case where the Registrar thinks it right to do so, he may take oral testimony instead of or in addition to evidence by statutory declaration.

After reviewing the evidence, the Registrar will determine the question between parties, subject to appeal to the Federal High Court. It is important to note that the Registrar may at any stage of the proceedings refer the application for cancellation to the court.

An application for removal is made to the Federal High Court in the prescribed form where a matter is pending before the court regarding a particular trademark. An appeal from a decision on removal of trademark by the Registrar lies firstly with the Federal High Court, then with the Court of Appeal and finally with the Supreme Court.

In the case of non-renewal of trademark, the Registrar may revoke an expired trademark where the proprietor fails to pay the renewal fee prior to the expiration date or fails to pay the renewal fee with the appropriate surcharge after the expiration date, after the necessary notice of impending expiration has been sent by the Registrar.

The Registrar is statutorily required to notify the registered proprietor of the trademark of the impending expiration not less than one month and not more than two months to the expiration date in the first instance and not less than 14 days but not more than one month to the expiration date in the second instance.

Where the proprietor fails to pay the necessary fee before the expiration date, the Registrar shall advertise the expiration of the trademark in the Trademarks Journal and shall be free to remove the trademark from the Register where the proprietor fails to pay the renewal fee with any surcharge for late renewal within one month after the advertisement.

Conclusion

Nigerian law allows for cancellation of trademark on a variety of grounds. These include non-use, non-renewal, obtaining registration by fraud, etc. An application for revocation can be made by an interested party to the Registrar of Trademarks or to the Federal High Court.

Please note that the contents of this article are for general guidance on the Subject Matter. It is NOT legal advice.

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