Design applications to be checked against registered designs and trademarks

The Nigerian registrar of trademarks, patents and designs, Hajia Jamilia Ahmadu Suka, has recently taken constructive steps to improve the services of the registries. Although some of these innovations have attracted criticisms, observers agree that the changes have, on the whole, been very positive. The most widely debated development at the moment is a new practice directive issued by the Designs Registry: effective from January 3 2011, all applicants for the registration of a design must carry out a search of both the Designs Register and the Trademarks Register.

Although there had been rumours that this new practice directive would be adopted in the near future, some practitioners were surprised by the speed with which it came about. The fact that files can now move easily from one registry to the other shows that a lot of background preparation and planning had already taken place.
While there has been no official statement on the rationale behind this new procedure, there are strong indications that the registrar sought to protect the rights of foreign trademark owners. In the past, some local businesses, in a bid to associate their goods and/or services with successful foreign brands, have effectively registered well-known trademarks as designs.
Investigations reveal that more than half of these registered designs had been refused by the Trademarks Registry on the grounds that they violated Section 13 of the Nigerian Trademarks Act, which expressly prohibits the registration of trademarks that are identical, or similar to, earlier applications or registrations. These applications usually ended up at the Designs Registry, where the designs were often registered.

This new initiative is thus welcome, since it is widely believed that it will curb this trend, especially where the well-known trademarks or service marks have been registered in Nigeria (or, at least, where an application for registration has been filed at the Trademarks Registry).
However, some practitioners are requesting that the examination process be improved at all the registries. According to some, while the new initiative will help reduce the number of dishonest design applications, there remains a possibility that some of these applications will slip through the net. Consequently, the more widely accepted method of eradicating such practices is to better train examiners at the various registries. This would also help reduce the delays experienced by applicants.
Although the registrar has assured practitioners that the continuous training of examiners is on the agenda, there is mounting pressure on her to ensure that this change is implemented swiftly.

Adeola Olumeyan, Jackson Etti & Edu, Lagos

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