Non-registrable Trademarks

Trademarks are marks used or proposed to be used in the course of trade to indicate a connection between the goods and a person who has a right to use the mark. A mark, on the other hand, includes a ‘device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof’.

1 A trademark is a crucial component of modern-day businesses and an indispensable tool for product differentiation, origin/source indicator and advertising. It is therefore pertinent that due caution is exercised in the selection of a trademark. Surely, you would not want to commence the registration process, only to find out that the mark is non-registrable. This may even be more damaging, in cases where you have begun selling your goods and services with an unregistered mark, only to find out that the mark cannot be registered.

In choosing a trademark, whether or not you intend to register the mark immediately, it is imperative that you are mindful of the rules that govern the registration of trademarks. This is because the Trademarks Act declares certain trademarks non-registrable.

The following marks are non-registrable trademarks:

Non-registrable Trademarks

Deceptive or Scandalous Marks:

Section 11 of the Trademarks Act states that it is unlawful to register as a trademark or a part of a trademark, anything which could likely deceive or cause confusion as well as a scandalous design. The list of things that are likely to deceive or cause confusion is not exhaustive. A trademark will be rejected for being deceptive or held to be likely to cause confusion if it wrongly describes or depicts the character or quality of the product in relation to which it is sought to be used, or falsely attempts to portray a connection with goods produced by someone else.

Things that are considered scandalous may vary, depending on the circumstances. For example, in 2019, Amazon pulled down some home products, such as doormats and bath mats which had inscribed on them some Koranic verses. 2 Some Islamic rights
activists were of the opinion that it was offensive to the Islamic religion and inappropriate to adorn lavatories, bathroom and toilet seat with religious text or imagery.

3 A trademark that has religious symbols, intended for use on mundane objects may be rejected for registration. Also a trademark comprised of obscenities or salacious images, for use on children school bags or clothes may be rejected for registration.

Names of Chemical Substances:

Section 12 of the Trademarks Act prohibits the registration of a word commonly used or accepted as the name of a single chemical compound (except the chemical name of a mixture). Trademarking a chemical name, will unfairly confer an exclusive right of use to the proprietor of the trademark, it is for this reason that it is prohibited. However, a chemical name is registrable if a word is used in addition to the chemical name to denote the brand or make of such chemical substance. So, for example, while the name Sodium Chloride is not registrable, the trademark Davies Sodium Chloride is registrable.

Identical and Resembling Trademark:

Section 13 of the Trademarks Act states that no trademark shall be registered in respect of any goods or description of goods that is identical with a registered trademark of a different proprietor in respect of the same goods or description of goods, or so nearly resembling it, such as may be likely to deceive or cause confusion.

This is aimed at protecting a prior registered trademark from possible infringement, exploitation of his goodwill or confusion as to the origin of goods that may be similar to that of a registered proprietor. The Supreme Court in Patierson Zochonis and Company Ltd V A. B. Chami and Company Limited held that in determining if a proposed trademark is similar or likely to confused, it should always be considered if there is a real tangible danger of confusion if the mark which is sought to be registered should be put on the Register.

4 What also ought to be considered is whether “‘the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone,’ would be likely to be confused or deceived”.

5 The courts over the years have held that ‘Peacock Milk’ could create confusion in relation to ‘Peak Milk’ and ‘Bubble Up’ is likely to create confusion in relation to’ Seven Up’, because of the similarity of the names. Article 17 of the Trademarks Regulation issued pursuant to the Trademarks Act also enumerates non-registrable marks.

A trademark will not be registered if it has words like ‘patent’, ‘patented’, ‘registered’, ‘registered design’, ‘copyright’, or all such similar words. Words like Red Cross, Geneva Cross, Swiss Federal Cross, or the representation of any such crosses in their known colours such as red for Red Cross, etc (remember that a trademark is made up of both words, colours, signature, letter, signature etc or a combination thereof) is also prohibited. The use of a representation of the Nigerian Coat of Arms or that of a state or city, flag, insignia or emblems or the like are also prohibited.

The name of an existing business, company etc are non-registrable.

Where the name or a representation of a person is sought to be used as a trademark or part of a trademark, the registrar may request that a consent letter be provided before registration. Where the person is dead, the consent letter may be obtained from the deceased’s legal representatives.

In the formulation or creation of a trademark, the above should be put into consideration, so as not to come up with a non-registrable mark. A combination of words or letter (which can be written in an artistic style), the fusion of words from different languages, symbols, colour, adaptation of different animals (that best represents your product/services), numerals etc, should be creatively deployed to create a unique trademark. It is also important that a proposed trademark should consist of invented
words; this makes it possible to register it as a defensive trademark, if the need arises.

Even when you do not intend to register your trademark immediately, it may be prudent to consult a lawyer, so that you do not discover that the proposed trademark is not registrable when you are ready to register it. It is also best to register your trademark
immediately, to rule out the chances of someone else registering a similar trademark before you. Also, when you engage a graphic designer to come up with a design to be incorporated in your trademark, it is important to emphasise that you do not want duplicity or a recreation of a similar design for someone else in future.

1 Section 67 of the Trademarks Act.
2 Megan Cerullo, ‘Amazon Pulls Offensive Bath Mats and Doormats with Quran Verses’ (8 January 2019,
MoneyWatch)  accessed 18 September 2020.
3 Megan Cerullo, ‘Amazon Pulls Offensive Bath Mats and Doormats with Quran Verses’ (8 January 2019,
MoneyWatch) accessed 18 September 2020.

4 (1971) LPELR-2905(SC).
5 Patierson Zochonis & Company Ltd V A B Chami and Company Limited (1971) LPELR-2905(SC), relying on
Alban Pharmacy V Sterling Products International [1968] All NLR 292.