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Trade Marks 2021 Trade Marks 2021 A practical cross-border insight into trade mark work 10th Edition Featuring contributions from: Acapo AS Gowling WLG Ofo Ventura Intellectual Property & Litigation Alburhan Law Firm GV IP Law Firm OLIVARES Arent Fox LLP HSM IP Ltd. OSH Advocates, Solicitors & Legal Consultants Arochi & Lindner Inventa International Pham & Associates Bird & Bird LLP Jones & Co. Preu Bohlig & Partner Borenius Attorneys Ltd Koushos Korfiotis Papacharalambous LLC Simont Braun Cedar White Bradley LexOrbis Sołtysiński Kawecki & Szlęzak DunnCox McAndrews, Held & Malloy, Ltd. SyCip Salazar Hernandez & Gatmaitan Ehrlich, Neubauer & Melzer (EN&M) Murta Goyanes Advogados TIPLO Attorneys-at-Law FTCC Studio Legale Associato Nater Dallafior Rechtsanwälte AG Voelkel Kataliakos Roussou Law Office Fukami Patent Office, P.C. NICO HALLE & Co. LAW FIRM Wintertons Legal Practitioners G. Elias & Co. NOVUS HM Legal Practitioners Gorodissky & Partners Obaidullah Asadi Legal Services Co., Ltd. ISBN 978-1-83918-107-8 ISSN 2049-3118 Published by 59 Tanner Street London SE1 3PL United Kingdom Trade Marks 2021 +44 207 367 0720 [email protected] th www.iclg.com 10 Edition Publisher James Strode Editor Jane Simmons Senior Editor Contributing Editor: Sam Friend Nick Aries Head of Production Suzie Levy Bird & Bird LLP Chief Media Officer Fraser Allan CEO Jason Byles Printed by Ashford Colour Press Ltd. Cover image ICLG.com ©2021 Global Legal Group Limited. All rights reserved. Unauthorised reproduction by any means, Strategic Partners digital or analogue, in whole or in part, is strictly forbidden. Disclaimer This publication is for general information purposes only. It does not purport to provide comprehen- sive full legal or other advice. Global Legal Group Ltd. and the contributors accept no responsibility for losses that may arise from reliance upon information contained in this publication. This publication is intended to give an indication of legal issues upon which you may need advice. Full legal advice should be taken from a qualified professional when dealing with specific situations. © Published and reproduced with kind permission by Global Legal Group Ltd, London Table of Contents Expert Analysis Chapters What Next for ‘Bad Faith’ in Trade Mark Law? 1 Louise Vaziri & Nick Aries, Bird & Bird LLP Trade Dress Protection in the United States – A Moving Target 7 Ron DiCerbo, McAndrews, Held & Malloy, Ltd. Q&A Chapters Afghanistan Italy 13 Obaidullah Asadi Legal Services Co., Ltd.: 140 FTCC Studio Legale Associato: Filippo Canu & Qazi Azizullah Sadiqi & Abdullah Sadiqi Pierluigi Cottafavi Belgium 20 Jamaica Simont Braun: Emmanuel Cornu, Eric De Gryse & 151 DunnCox: Joanne Wood Rattray & Kelly Akin Romain Meys Japan Brazil 161 29 Fukami Patent Office, P.C.: Yoshitake Kihara & Murta Goyanes Advogados: Luiza Duarte Pereira & Miki Tomii Tatiana Ortiz de Almeida Korea Cameroon 169 GV IP Law Firm: Jiha Park 38 NICO HALLE & Co. LAW FIRM: Vanessa Halle & Francine Kenah Njekam Mexico 176 OLIVARES: Alonso Camargo & Victor Ramírez Cayman Islands 47 HSM IP Ltd.: Sophie Peat & Huw Moses Nigeria 186 China G. Elias & Co.: Fred Onuobia SAN & Similoluwa 56 Jones & Co.: Yixian Chen & Paul Jones Oyelude Norway Cyprus 195 Acapo AS: Kristina Edén Johnsen & Ingrid Wetlesen 66 Koushos Korfiotis Papacharalambous LLC: Eleni Davanger Papacharalambous & Georgia Charalambous Philippines Finland 203 SyCip Salazar Hernandez & Gatmaitan: Vida M. 78 Borenius Attorneys Ltd: Ben Rapinoja & Lasse Panganiban-Alindogan & Anna Loraine M. Mendoza Laaksonen Poland France 213 87 Gowling WLG: Céline Bey & Clémence Lapôtre Sołtysiński Kawecki & Szlęzak: Dr. (hab.) Ewa Skrzydło-Tefelska & Karol Gajek Germany 101 Portugal Preu Bohlig & Partner: Astrid Gérard & Moritz 222 Koerner Inventa International: Vítor Palmela Fidalgo & João Pereira Cabral Greece 111 Saudi Arabia Voelkel Kataliakos Roussou Law Office: Anna 230 Roussou & Dr. Henning Voelkel Alburhan Law Firm: Saeed Algarni, Ahmed Assiri & Hussain Alzahrani India 119 LexOrbis: Manisha Singh & Omesh Puri Spain 240 Arochi & Lindner: Gonzalo Barboza, Teresa Trallero Israel Ocaña & Miriam Anidjar Mogeda 129 Ehrlich, Neubauer & Melzer (EN&M): Adv. Yehuda Neubauer & Adv. Chamutal Niran Switzerland 253 Nater Dallafior Rechtsanwälte AG: Dr. Mathis Berger © Published and reproduced with kind permission by Global Legal Group Ltd, London Q&A Chapters Continued Taiwan United Kingdom 261 TIPLO Attorneys-at-Law: J. K. Lin & H. G. Chen 313 Bird & Bird LLP: Daniel Anti & Nick Aries Turkey USA 274 Ofo Ventura Intellectual Property & Litigation: 321 Arent Fox LLP: Michael A. Grow & James R. Davis, II Özlem Futman & Yasemin Aktaş Vietnam Uganda 330 Pham & Associates: Pham Vu Khanh Toan 285 OSH Advocates, Solicitors & Legal Consultants: Joan B. Nairuba & Kazibwe Timothy Zambia 340 NOVUS HM Legal Practitioners: Misozi Hope Ukraine Masengu 292 Gorodissky & Partners: Oleg Zhukhevych & Maksym Kravchenko Zimbabwe 349 Wintertons Legal Practitioners: United Arab Emirates Cordellia Nyasha Midzi 305 Cedar White Bradley: Theuns van de Merwe © Published and reproduced with kind permission by Global Legal Group Ltd, London 190 Chapter 21 Nigeria Nigeria Fred Onuobia SAN G. Elias & Co. Similoluwa Oyelude 1 Relevant Authorities and Legislation 2.3 What information is needed to register a trade mark? 1.1 What is the relevant trade mark authority in your The following documents and information will be required for jurisdiction? registration of a trade mark in Nigeria: (i) the name, nationality and address of the proprietor of the The relevant trade mark authority in Nigeria is the Nigerian trade mark; Trademarks Registry, under the Federal Ministry of Trade and (ii) representation of the trade mark; Investments. (iii) specification of goods/services for which the trade mark is sought to be registered; (iv) the class of goods/services; and 1.2 What is the relevant trade mark legislation in your (v) an executed power of attorney in favour of an authorised jurisdiction? agent or attorney to be filed at the Trademarks Registry. The following laws are the relevant trade mark legislations in 2.4 What is the general procedure for trade mark Nigeria: registration? (i) Trademarks Act, CAP T13 Laws of the Federation of Nigeria, 2004 (the “Trademarks Act”). (ii) The Trademarks Regulation, 1967. An availability search is conducted at the Trademarks Registry. (iii) The Merchandise Marks Act, CAP M10 Laws of the It takes about three (3) days to obtain a search report: (i) the trade mark application is filed. It is subsequently examined for regis- Federation of Nigeria, 2004 (the “Merchandise Marks tration; (ii) an Acceptance Form is usually issued within one to Act”). (iv) The Trademark Malpractices (Miscellaneous Offences) three months. After the mark has been accepted, it is listed for Act CAP T12 LFN 2004. publication in the trade marks register. (The publication time- (v) The Counterfeit and Fake Drugs and Unwholesome line is determined by the Trademarks Office); (iii) after publi- Processed Foods (Miscellaneous Provisions) Act. cation in the Trademarks Journal, the trade mark application is (vi) The Cybercrimes (Prohibition, Prevention) Act 2015. open to oppositions. The opposition period is two (2) months from the date of publication in the Trademarks Journal; and (iv) where there are no oppositions, an application for sealing of the 2 Application for a Trade Mark trade mark application is filed in order to obtain the certificate of registration. This usually takes between three to six months. 2.1 What can be registered as a trade mark? 2.5 How is a trade mark adequately represented? Any device, brand, heading, label, ticket, name, signature, word, letter, colour marks, numeral, or any combination thereof may be registered as a trade mark. Three dimensional marks are also There is no statutory provision governing how a trade mark eligible for trade mark protection. can be adequately represented. All that is required under the Trademarks Act is that the mark should be distinctive. The trade mark may be limited in whole or in part to one or more 2.2 What cannot be registered as a trade mark? specified colours. If it is registered without limitation, then it is taken to be registered for all colours. Deceptive or scandalous marks or designs or marks that are likely to cause confusion are not eligible for trade mark protection. 2.6 How are goods and services described? Names of chemical substances and geographical names in their ordinary signification are also ineligible for trade mark protection. The description of goods and services in Nigeria is based on the Nice Classification. Protection may be claimed under the whole class heading or if a specific line of goods/services is being targeted, a more narrow description might be preferable. Trade Marks 2021 © Published and reproduced with kind permission by Global Legal Group Ltd, London G. Elias & Co. 191 2.7 To the extent ‘exotic’ or unusual trade marks can be 2.16 If so, does a Power of Attorney require notarisation filed in your jurisdiction, are there any special measures and/or legalisation? required to file them with the relevant trade mark authority? No. Notarisation or legalisation is not needed. A duly executed Non-traditional trade marks such as colour marks, three Power of Attorney by an authorised person is sufficient for filing dimensional marks, labels and devices are registrable with the a trade mark application. Trademarks Registry. 2.17 How is priority claimed? 2.8 Is proof of use required for trade mark registrations and/or renewal purposes? Section 44 of the Trademarks Act requires the President of Nigeria to designate the relevant Convention Countries to which Proof of use is not required for the registration or renewal of claims for priority are applicable by means of a formal declara- trade marks in Nigeria. tion. Such declaration is then subsequently published in a federal gazette. These twin requirements have not been fulfilled, and as 2.9 What territories (including dependents, colonies, etc.) such, priority cannot be claimed for the time being. are or can be covered by a trade mark in your jurisdiction? 2.18 Does your jurisdiction recognise Collective or Trade marks registration and protection is territorial.
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