I have a friend who had registered a company for like 1yr 6 months without starting the business yet because his trademark is still pending publication even though the trade mark was marked approved… He argued that he rather wait for its publication which is not happening either for the past 5 months waiting since he received approval of the trademark filling… what are the pros and cons of his waiting and advise??
1 Like
Yikes, your friend is going to have a long wait.
We haven’t gotten certificates for marks that got approved 2014 so if he just got his approval last year, there’s likely a 2 year wait ahead except the Trademarks Registry publishes about 4-5 journal editions back to back .
An acceptance letter from the registry is prima-facie proof of ownership pending publication. I’ll suggest your friend goes ahead to start business if every other thing for starting the business is in place, and the name cannot be interpreted to be an infringement on a registered trademark or on a brand that is widely known to belong to another business (goodwill)
Are you then saying with his acceptance letter, All-is-now-well and should proceed? What if somehow business started and the mark is printed and advertised for normal business and from nowhere some one puts a claim it… what defense does he has? even the registry who have checked all data and issues an acceptance shows that back to back such name was never registered neither was it in a pending status by anyone else in Nigeria, shouldnt the registry be blamed as well?
1 Like
Hi,
Recall I said:
- Prima-facie, which means until proven otherwise, meaning there’s a chance for someone to prove otherwise by having an existing similar registered trademark
2.cannot be interpreted to be infringing existing marks.
If your friend already feels that the mark might be conflicting with existing marks, then maybe he should go back to the drawing board. The fact that he waits for publication is not a guarantee that his mark will be registered. If he’s harbouring such fears now, he probably knows the mark is likely to infringe. If that’s the case, there’s a high risk someone would put in an objection when the mark is published. If he’s mark is original, he should have no such fears and be confident to use the mark pending publication like most do.
The registry cannot be blamed if an objection is brought. That’s the essence of publication, for third parties to verify what the registry may have missed. If an objection is brought, and the registrar decides in favour of whoever brought the objection and your friend feels wronged, the Registrar’s decision can be appealed in court.
P.S. The trademark process and classification system is not unique to Nigeria and has been adopted by most countries globally.
Can you please explain this part better [quote=“Odunoluwa, post:22, topic:8362”]
except the Trademarks Registry publishes about 4-5 journal editions back to back .
[/quote]
Its not a question of him been afraid, one needs to be cautious in all undertakens, especially in a disorganized society such as ours…Something is still missing… For an institution to clearly tell you that from the govt system and all other available medium executed available within the govt system, your intending trade mark is accepted and tomorrow some one wakes up to say that is his trademark, it means the system of the govt is questionable.
Just like CAC, you pay for a name search, and if available for registration so be it… Thats a clear working system… Not the other way round… If it happens it means the registry failed in their verifications as well
Part of the process of registering a trademark is publishing any mark that has been submitted for registration in a journal for the general public to object if similar to an existing mark. A trademark is only registered and a certificate issued after this step.
Trademark journals should typically be published quarterly but as with all things Nigeria, the registry barely publishes 1 in a year.
So my statement assumes a situation where the registry becomes more efficient and publishes several journals to clear the backlog of marks waiting to be published.
The process is actually rather straightforward, and as I said before not unique to Nigeria, your trademark is not registered until you are issued a certificate and there are extremely rare instances where a mark is overturned after the registry has issued a certificate. In fact in such rare instances, it is not the registry that overturns but the courts. An acceptance letter is what it is, “an acceptance to publish” which yes is prima-facie proof of ownership but still isn’t ownership or an issuance of a certificate.
And you would be surprised, how many times the CAC has approved a name during a search and at the point of submitting the registration documents, they tell you the name is no longer approved because they erroneously approved the name and have now found a similar name. A few of our customers at DIYlaw can testify to this. In fact, there is a caveat in bold Italics on name approval slip. that allows them to do this:point_down:
