Ilse du Plessis of ENSafrica looks at trade marks and company names in Nigeria
With a population in excess of 170 million, Nigeria is far-and-away Africa’s most populous nation. Unsurprisingly, it also has the continent’s largest economy. Although the economy is strongly reliant on oil, there is now a fast-growing services sector. There’s also a rapidly burgeoning middle class, and with that comes an ever-increasing need for consumer goods.
All of these factors make for a country where trade mark registration is important. So it’s good to know that the trade mark registration system in Nigeria is in fairly good shape. In Nigeria, you get trade mark protection by way of national registrations. That’s because Nigeria doesn’t belong to either of the regional registration systems that apply in Africa, OAPI and ARIPO, nor does it belong to the Madrid system for the international registration of trade marks.
The Nigerian registration system has been upgraded over recent years. For starters, the registration system is now electronic. The authorities have also taken steps to speed up both examination and opposition procedures. It is in this context that a recent article by Nigerian practitioner, Bolanle Olowu, that deals with the overlap between trade mark registrations and company names, makes for interesting reading. Olowu introduces the topic as follows: “The crux of this article is that in recent times our firm has dealt with cases where foreign trademark owners have discovered that an incorporated company in Nigeria has included their registered trademark as part of its company name.”
The companies legislation in Nigeria, the Companies and Allied Matters Act 2004, provides that you can’t register a company with a name that “violates” an existing trade mark registered in Nigeria without the consent of the trade mark owner. More importantly, it also provides that the registry, the Corporate Affairs Commission (CAC), can require a company to change its name after the fact. The relevant section reads as follows: “Nothing in this Act shall preclude the Commission from requiring a company to change its name if it is discovered that such a name conflicts with an existing trademark… registered in Nigeria prior to the registration of the company and the consent of the owner of the trademark…was not obtained.”
The second provision is important because it appears that, when it comes to registering companies, the CAC does not search against registered trade marks. As a result, it’s not uncommon for companies that have names that conflict with registered trade marks to be registered. All that a trade mark owner needs to do in order to get the CAC to direct a company to change its name after incorporation, is to provide proof of the trade mark registration, and confirmation that it did not authorize the use of its trade mark by the company.
Not surprisingly, the second provision does cause aggravation. After all, it must be highly irritating to have the CAC approve your name – seemingly after a search of company names has been done – only to be told much later that the name conflicts with a registered trade mark and that it must be changed. Apparently it’s not uncommon for companies to refuse to comply with such directions.
This is precisely what happened in a case that involved South African-based retailer Mr. Price, which has a trade mark registration for its name in Nigeria. When a Nigerian company called Mr. Price West Africa refused to comply with the CAC’s direction that it change its name, Mr. Price took the matter to court.
The Nigerian court held that the CAC had been quite entitled to require the company to change its name, notwithstanding the fact that it had previously searched and approved the name. The judge made the point that the issue of whether a company name is similar to a registered trade mark is a decision for the CAC and not for the court. It also made it clear that there does not need to be any link or overlap between the goods or services covered by the trade mark registration and the goods or services offered by the company.
So how does the CAC enforce a direction that a company change its name after incorporation? The article makes the point that the CAC has some interesting powers. It can enforce its decision by way of a mandatory bar on the company’s activities. It can publish a notification in the press advising third parties not to do business with the company. And it can bar the directors of the company from being involved in the incorporation of any further companies.
The decision makes it clear that a Nigerian trade mark registration is certainly worth having, especially if one considers the wide rights it confers against companies. ENSafrica has a great deal of experience in trade mark registration and all related trade mark matters, including enforcement issues, in Nigeria.
Ilse du Plessis