GROUNDS AND PROCEDURE FOR TRADEMARKS RECTIFICATION ACTIONS IN NIGERIA

INTRODUCTION

Rectification is the legal procedure to correct (rectify) an error or an omission that has been made in the details of a trademark as recorded in the Trademarks Register- where all registered trademarks are entered/recorded. It is to set right, to correct, or make an alteration of a trademark in the Trademarks Register. It is essential for Trademarks to be registered or entered in the Register as registration or entry confers on one exclusive use of such trademark. Entry into the register shows that the registration process has been concluded and the trademark has been successfully registered. In Nigeria, registered trademarks are entered either in Part A or B of the Register. Trademarks under Part A are those which are inherently distinctive while those registered under Part B are those that acquire their distinctiveness or uniqueness by virtue of use or are capable of distinguishing the goods or services to which they are affixed or known with. Without Registration, there can be no liability for trademark infringement. Registration i.e entry into the Register confers on one the right for trademark infringement in respect of that particular trademark.?

The power to rectify is vested on- (a) Court i.e the Federal High Court and (b) the Registrar of Trademarks. Rectification is done on the application of a concerned person or application by the Registrar himself

Grounds for Rectification Action in Nigeria

·????????Incomplete entry or omission of specific particulars in the Register

·????????Any entry made in the Register without sufficient cause

·????????Entry which wrongly remains in the Register e.g an Infringing trademark in the Register

·????????An Existing error or defect in any entry in the Register.

·????????Where there is fraud in the Registration.

·????????Assignment or transmission: To reflect new Proprietors.

·????????Non-use

Procedure for Rectification actions in Nigeria under the Trademarks Act

??By Application: Any concerned person who alleges any of the above grounds may apply in the prescribed manner to the Court or to the Registrar and the tribunal may make such order for making, expunging or varying the entry as the tribunal thinks fit.

??If there is a pending action in Court, then the application must be made to the Court but in any other case, the application is made to the Registrar who may at any stage of the proceedings, refer the application to the Court or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.

??Also, in case of fraud in the registration, assignment or transmission of a registered trademark, the Registrar may himself apply to the Court for the rectification of the Register.

??Where the Court grants an order for the rectification of the Register, it shall direct the notice of the rectification to be served in the prescribed manner on the Registrar, and the Registrar shall on receipt of the notice rectify the register accordingly.

Effect/Implication of Trademarks Rectification

Generally, rectification has a retroactive impact. This means the updated Register will be read as though it had been entered in the modified form.

Conclusion

Registration of trademarks confers on one, the exclusive use and ownership of that trademark. If need be at any time, such trademarks can be rectified i.e altered, amended, or corrected to reflect the true intentions of the proprietors of that trademark or the correct or current Proprietors of the trademark.

AUTHOR: Adick Joshua Adick

Partner

AUREOLE ATTORNEYS.

www.aureoleattorneys.com; [email protected]; +234 816 913 1394