Conducting Opposition Proceedings at Nigeria’s Trademark Registry: Jurisdictional and Adjunct Issues

Description

ABSTRACT

Conducting Opposition Proceedings at Nigeria’s Trademark Registry: Jurisdictional and Adjunct Issues

Judedavid Ogochukwu Mbamalu*

Trademark Opposition proceedings conducted at the Trademarks Registry in Nigeria by officers of the Registry other than the Trademarks Tribunal, seem to have settled in with Intellectual Property Rights jurisprudence in Nigeria, in disregard to the relevant provisions of the extant Trade Marks Act of 1965, which domiciled the jurisdiction to conduct such proceedings in the Trademarks Registrar only. This practice exacerbates the necessity to amend the Trade Marks Act to inter alia, provide for setting up an appropriate tribunal to preside over Opposition Proceedings at the Registry in line with global industry best practice. A complaint against trademark infringement, predicated on an unregistered trademark, is a passing off cause of action, and Section 251(1)(f) of the Nigerian Constitution which specifically reposed such jurisdiction on the Federal High Court, ought to be engaged rather than deploy Opposition Proceeding at the Trademarks Registry.

Keywords: Trademark, Trademarks Registry, Intellectual Property Rights, Jurisdiction, Trademark infringement, Opposition.

INTRODUCTION
This exiguous article seeks to address, (a) whether the Registrar’s power to conduct and determine opposition proceedings is delegable under the law, to any officer in the Trademarks Registry, (b) whether the Notice of Opposition as a cognomen confers wide powers on the Registrar to entertain complaints of an opposer without a certificate of registration of a mark sought to be protected and (c) judicious adjudication of Opposition Proceedings. This paper ventures into resolution of these issues through the prism of the decision of the Federal High Court rendered whilst exercising its judicial review jurisdiction in the case of Caporn Industries Limited v Registrar of Trademarks & Sunmark Limited.₁

CONDUCTING OPPOSITION PROCEEDINGS
Objection to registration of a trademark, as an incident of registration, is provided for under Section 20 of Trade Marks Act.₂ It enables an opposer of an application for trademark registration to send an opposition to the Registrar within two months from the date of publication of the application sought to be opposed. The opposition proceedings are required to be heard by the Registrar after which a decision is rendered.₃

A REVIEW OF CAPORN INDUSTRIES V REGISTRAR OF TRADEMARKS
Statement of Facts
Upon the publication in the Trademarks Journal, of Caporn Industries Limited’s (Caporn) application number F/TM/2011/17678; Golden Heaven in class 32, Sunmark Limited (hereinafter called the opposer) which claimed to be the owner of trademark Pure Heaven opposed…

* LL.B (Hons) (UNN), BL, LL.M (Maritime & Commercial Law) (LASU), LL.M (Computer & Communication Law) (QMUL, UK), LL.D (UNISA) Managing Partner, Jumbo Chambers. Email:

ju***@ni*********.ng

1. [The Caporn’s Case] Suit No FHC/ABJ/CS/715/18 decided in 2020.
2. Cap T13 LFN 2004 (Trade Marks Act).
3. Trade Marks Act, s 21.
   

THE GRAVITAS REVIEW OF BUSINESS & PROPERTY LAW VOL.11 NO.3