Loss of Trademark through Non-Use

Use of a trademark is not a prerequisite for the registration of a trademark under the Nigerian law. The Trademark Act defines a trademark as a mark used or proposed to be used in relation to goods (and services) in order to indicate or so as to indicate a connection in the course of trade between the goods (and services) and a person authorised to use the mark.

1. This means that a mark is eligible for registration as a trademark if the person seeking registration shows that the mark is either being used or is proposed to be used in the course of trade.

The registration of a trademark either under Part A or Part B confers on the proprietor of the mark, the exclusive right to use the trademark in relation to the goods in respect of which the registration was done.


2. A person therefore infringes trademark when he/she uses an identical mark or a mark so nearly resembling it, such that it may likely deceive or cause confusion in the course of trade. The law, therefore considers it unfair, if after the registration of a trademark, the proprietor does not use it and equally precludes others from using it.

In the Indian case of Vishnudas Trading v Vazir Sultan Tobacco Co.Ltd, the court noted that ‘Nobody can prevent others from using a mark by keeping it in one’s folds without making use of it’.

3. This principle is also applicable in Nigeria. Thus, while the use of a trademark is not a prerequisite for registration, it is a condition for the continued retention of the trademark. Section 31 of the Trademark Act provides for the loss of trademark on the ground of non-use.

Non-use refers to the failure to use a registered trademark in the course of trade, within a specified time, usually, not less than five years from the date of registration. A registered trademark is lost when it is taken off the Trademarks Register. This is because entry and the retention of a registered trademark in the Trademarks Register is prima facie proof of registration of a trademark and the continued existence of a right in the registered trademark.

4. A registered trademark may be taken of the register upon the application of anyone concerned (person concerned means anyone except the registrar).

5  The law also recognises the right of a person who was permitted to register an identical or nearly resembling trademark, to bring an application for the removal of a trademark on the ground of non-use.

6 The application for the removal of a registered trademark from the register may be made to the court or to the Registrar of Trademarks. However, where there is an action pending before the court in relation to the trademark, the application must be made to the court.

7 A registered trademark will be taken off the register on the application of an interested person in the following cases:
i. Where it is established that the trademark was registered without any bonafide (genuine) intention on the part of the proprietor to use it in relation to the goods in respect of which it is registered and that there has been no bonafide use of the trademark, for the time being, up until one month before the application for removal was made; or

ii. Where the applicant shows that there has been no bonafide use of the registered trademark by the proprietor in relation to the goods, in respect of which it was registered for a continuous period of 5 years or longer, and one month before the date of the application.

8 The application for the removal of the registered trademark from the register will fail if bonafide use of the trademark in relation to the goods in respect of which the trademark was registered is established. Bonafide use of trademark refers to the use of a registered trademark in good faith, devoid of bad faith or an attempt to deceive or mislead. Where there is a long period of non-use, punctuated by occasional, sporadic or infrequent use, it may not
be considered to be a bonafide use.

9. In Procter & Gamble Ltd v Global Soap & Detergent Limited, the court ordered that the trademark ‘Flash’ which was registered for the sale of soaps and detergent be taken off the register.

10. The court made the order because since the trademark registration in 1960, it was not used, until between April and June of 1988, the court therefore held the view that use for three months did not amount to a bonafide use.

11. Where a trademark is used in relation to goods that are to be exported from Nigeria, such usage will constitute use of a trademark under the law.

12. Also, it is a defence to an application for the removal of a registered trademark from the register, if it is shown that the failure to use the trademark is due to special circumstances in the trade and not the wilful refusal to use the trademark or an intention to abandon the trademark in relation to the goods in respect of which the trademark was registered.

13. For example, failure to use a trademark for the sale of a drug, due to an inability to obtain NAFDAC registration number, may be recognised as a special circumstance. Where a trademark is removed from the Trademarks Register, the removed mark may be registered by another person.

Where it is impracticable for a proprietor to use a registered trademark in relation to the goods in respect of which the mark was registered, he/she may choose to assign the trademark to someone else. It is best to register a trademark only when you are sure that you intend to use it in the course of trade, so that the registered mark is not lost through non-use.

 

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1 Section 67(1) of the Trademark Act.
2 Section 5(1) and 6(1) of the Trademark Act.
3 1997(4) SCC 201.
4 Section 49 of the Trademarks Act.
5 Section 31(1) of the Trademarks Act.
6 Section 31(3)(a).
7 Section 31(1) and 56(a) of the Trademark Act.
8 Section 31(2) of the Trademarks Act.
9 Adejoke O Oyewunmi, Nigerian Law of Intellectual Property 2015 Unilag Press 260.
10 [1989] FHCLR 357.
11 Adejoke O Oyewunmi, Nigerian Law of Intellectual Property 2015 Unilag Press 260.
12 Section 37 of the Trademarks Act.
13 Section 31(4) of the Trademarks Act.