It is no longer news that the recently passed Business Facilitation (Miscellaneous Provisions) Act 2022 (the “Omnibus Act”) has made significant changes to certain legislation that regulate the business space and commercial activity in Nigeria. The aim of the Omnibus Act is “ is to promote the ease of doing business in Nigeria, eliminate bottlenecks, amend relevant legislation, and institutionalise all reforms to ease implementation”.
One of such laws amended by the Omnibus Act is the Trademarks Act of 1965 (the “TM Act”), an archaic piece of legislation by all standards and arguably unfit for purpose given the significant developments in commerce since the colonial era.
The Omnibus Act made welcome amendments to the TM Act, one of which is the addition of the definition of “Goods” to include “Services” in the Interpretation section of the Act. Section 69(b) of the Schedule to the Omnibus Act further amends the definition of a “Trademark” under the Act to mean “a mark used or proposed to be used in relation to goods or services for the purpose of indicating a connection between the goods or services and a person having the right either as proprietor or as a registered user to use the mark, whether with or without any indication of the identity of that person, and may include the shape of goods, their packaging, and combination of colour; and in relation to a certification trademark, a mark registered or deemed to have been registered under section 43 of this Act:”
Historical Context
Prior to the passage of the Omnibus Act, the TM Act defined a trademark to mean “a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate a connection in the course of trade between the goods and some persons having the right either as proprietor or as a registered user to use the mark”.
Prior to 2007, it was also unclear whether the TM Act recognized and protected the use of service marks as there was no reference to the word ‘services’ in the TM Act. As a result of the omission, it was the practice to advise clients to apply for registration of service marks as trademarks under International Class 16 of the Nice Convention (printed matter and related materials).
In light of the foregoing and in a bid to allow for the registration of service marks under the Nice International Classification, Classes 35-45, the Nigerian Minister of Commerce and Industry, in 2007, revised the Trademarks Regulations (the “Regulations”) to include the classification of services; although the legality of the Minister’s revision was eventually questioned.
Thankfully, the Omnibus Act has removed any ambiguity around the registrability of service marks and services are now registrable specifically as Service Marks under Classes 35 – 45 of the Nice International Classification of Goods and Services. For example, a brand like “Nike” that manufactures sports and fashion items may now be registered as a service mark under Class 35- retail services connected with the sale of goods, while its goods such as one of its brands of shoes, the “Nike Air Max” may now be registered as a trademark under Class 25- “Clothing, footwear and headgear”.
It remains to be determined whether organizations providing services that are currently registered as trademarks under the relevant service classes will have to seek re-registration specifically as service marks, as it may take legislative intervention to determine the validity of those service marks filed pursuant to the Regulations, that is, before the Omnibus Act came into effect.
In the meantime, proprietors of such registrations are cautioned to maintain the respective annuities pending clarity on the matter.
This alert should not be construed as legal advice or a legal opinion on any specific facts or circumstances. This alert is not intended to create, and receipt of it does not constitute a lawyer-client relationship. The contents are intended for general informational purposes only, and you are urged to consult your attorney concerning any particular situation and any specific legal question you may have.
For further information, please contact: Adedamola Odubanjo (Associate)
M: +234-811 296 8045
F: +234(1) 2800858
E: adedamola.odubanjo@chrisogunbanjo.com
