THE CHALLENGES OF TRADEMARK PROTECTION LAW IN NIGERIA

Abstract

The trademark protection law is recognised in Nigeria but its key components - service marks, trade dress, and counterfeit of domain names - are yet to be incorporated into the law. Previous studies noted the absence of these key components but did not advance arguments for their full incorporation into the Act. This study examined the validity, adequacy or otherwise of the components under the Nigerian Trade Marks Act (NTMA) 1965 and in comparison with the United Kingdom Trade Marks Act 1994 (UKTMA) with a view to proposing their incorporation into NTMA.

The theoretical framework for this study is sited within the sociological jurisprudence school and the economic analysis of law. Doctrinal and comparative legal research methodologies were adopted. The primary sources used included the Constitution of the Federal Republic of Nigeria 1999, Merchandise Marks Act, 1916, NTMA 1965, Economic and Financial Crimes Commission Act 2004; the UKTMA 1938 and 1994, Paris Convention for the protection of Industrial Property 1963, Trade-Related Aspects of Intellectual Property Rights (TRIPs) 1995, Universal Declaration of Human Rights 1948. Case laws from Nigeria and United Kingdom were used. Secondary sources included legal books, law journals and articles. Unstructured interviews were conducted with accidentally selected intellectual property practitioners and experts in Abuja, Ibadan, Ilishan-Remo and Lagos; and randomly selected petty traders and shop keepers in Ibadan were also interviewed. Data were subjected to descriptive and comparative analysis.

The substantive law on trademark is the Trade Marks Act 1965 which regulates trademark in Nigeria today. The NTMA 1965 is based substantially on the old United Kingdom Trade Mark Act 1938, replaced with the UKTMA 1994, but the NTMA has remained unreviewed. The definition of trademark under section 67 of the NTMA excludes service mark and packaging contrary to other legislations such as the United Kingdom’s. The NTMA is inadequate in that it applies only to goods unlike the UKTMA which apply to both goods and services. In 2007, the Minister of Commerce extended classes of goods and services under the Nice Classification of Goods 1957 but Nigeria does not subscribe to this treaty; it only adopts an observer status. The Minister’s exercise of his power to make regulations extends to goods and not to services as goods are not services and vice versa. Nigeria has, over the years, incorporated commerce into the Act but this is still premised on the UKTMA 1938 which does not reflect new trends on trademarks. The NTMA, unlike UKTMA, does not recognise trade dress. The NTMA is flawed in the absence of legislative protection on trade dress which results in endless cases of unrecognised infringement. The NTMA, unlike the UKTMA, does not define infringement.

The Trademark law in Nigeria is an integral aspect of industrial property but its key components have not been accorded due rights and privileges compared to the United Kingdom Trade Mark Act. This makes the Nigerian Trade Marks Act to be unfavourably comparable to that of the United Kingdom. Therefore, appropriate amendments should be made for competitiveness.