Recommended ways to protect Pending Trademarks in Nigeria

Due to this lengthy registration period, it is essential that
a proprietor of a pending trademark takes proactive steps to protect its trademark as much
as possible between the period when the trademark registration commences and the
issuance of a trademark certificate. A pending trademark has the status of an unregistered
mark even after an acceptance letter has been issued. In the case of Wellcome Foundation Limited and Anor v. Ranbaxy Montari (Nig.) Ltd the issue was whether the acceptance of an
application before actual registration of the trade mark would vest the applicant with an
equitable title in the interim to sustain an infringement claim. The court held that the Trade
Marks Act does not recognise the vesting of an equitable title in a proprietor whose
application had been accepted but not yet registered, so as to entitle the claimant to
injunctive relief based on a protectable right. 

A registered trademark confers on the proprietor exclusive rights of use and the right to sue
for infringement in the event of unlawful use. However, this protection does not extend to
the proprietors of unregistered or pending marks. In Hondret and Co. Ltd v. Registrar of
Trade Mark, the Registrar relied on section 13(1) of the Trade Marks Act in refusing the
application to register the trademark “Rose Fresh Air Freshner” on the ground that it
conflicted with an earlier pending mark. The court held that section 13(1) of the Trade Marks
Act can only apply when the mark sought to be registered conflicts with a mark already
registered and not when both marks are the subject of pending applications. Thus, a
proprietor of a pending mark may not restrict prior or new identical or confusingly similar
applications from use by third-parties. This creates a conflict when multiple applications for
similar or identical trademarks are filed by different proprietors at the registry. The Trade
Marks Act provides that in such circumstance, the Registrar may refuse to register any of the
applications until their rights have been determined by the court or have been settled by
agreement in a manner approved by the registrar or by the court on appeal from the
registrar. This poses a major challenge to proprietors as all similar or identical pending marks will be accepted and allowed to proceed to the opposition stage where the
proprietors would be required to either prove their rights to the marks before the registrar or
the court, or reach an agreement as to the ownership and use of the competing marks. The
proprietor that succeeds at this stage maintains ownership of the mark and a certificate of
registration will be issued in its name. 

Due to this current state of the law, proprietors of
pending marks may lose their marks to other proprietors, after expending time and resources
in the process of trying to secure a registration. Proprietors can curb these exigencies by protecting and securing rights to their pending
marks through the following avenues: 

1. Using the trademark
Continuous use of a mark in relation to the specific good and/or services creates
awareness of the mark and ultimately develops relevant goodwill and associative
brand recognition by purchasers in the course of trade. Goodwill is the inherent value
and recognition of a mark amongst consumers.

Prior to using a trademark it is
important to conduct a clearance search at the Trade Marks registry and depending
on the value of the brand and liquidity of the proprietor to also carry out a market
survey to ensure the trademark does not conflict with any registered mark or any
mark that is already in use. This would avoid encroaching on the rights of other
trademark owners and a possibility of subsequent loss of ownership rights.
Continuous use of a trademark is the major way of acquiring common law rights to
a trademark and the proprietors of such marks can enforce their rights against an
infringer through an action for passing-off instituted at the Federal High Court.
Section 3 of the Trade Marks Act implicitly recognizes the right to maintain an action
for passing off under the common law. It is also recognised in section 7 of the Trade
Marks Act, that a proprietor of a registered mark cannot restrain another proprietor
from use of a mark similar to his, which has been continuously used before the
proprietor registered his mark. 

Similarly, in American Cyanamid Co. v. Vitality
Pharmaceutical Ltd., the Supreme Court held that the proprietor or registered user of a trademark is not entitled to interfere with an existing trademark even if identical
or nearly resembling his own, if that other mark has been in continuous use before
the registration of his own trademark.
Evidence of use and acquisition of goodwill of a trademark is sufficient proof of
vested rights to the mark and a proprietor of a pending mark that has continuously
used and acquired relevant goodwill, is more likely to succeed at the opposition stage
and maintain ownership of the mark. 

2. Advertising and publicity
Advertising specific products or services bearing the proprietor’s trademark is also a
good way of further increasing awareness of a mark amongst consumers and it
enables consumers identify the mark in relation to specific products/services whilst
distinguishing it from competing products/services. The ‘TM’ symbol may also be
used after a trademark on a product or service to inform the public that the mark has
acquired common law recognition and/or there is a pending application for the
registration of such trademark at the registry. This may also discourage other
proprietors from using the mark or applying for similar or identical trademark. 

3. Cease and desist letters
Cease and Desist letters may also be used to dissuade the competing proprietor
from using and/or proceeding with registration of the mark. It is used to curb
infringement at an early stage and to threaten further legal action if infringement
continues. The letter should contain sufficient evidence of rights to the mark such as
evidence of use and acquisition of goodwill which predates use by the putative
infringer of the mark. This is usually the first step taken before commencing an action
for passing off/infringement and this could also cause the competing proprietor to
withdraw his application at the registry and save the owner of the senior trademark
the aggravation, time and expense of having to prosecute a lawsuit.