Amendment formally introduces services as subject of trade mark and seeks to make shape of goods, their packaging and combination of colours registrable as trade marks.
| The President of the Federal Republic of Nigeria, Gen. Muhammadu Buhari, signed into Law the Business Facilitation (Miscellaneous Provisions) Bill, (hereinafter referred to as “The Act) on 14th February, 2023. The signing of this bill into law serves as the codification of Executive Order 001 of 2017 which was purposely engineered to encourage the ease of doing business while simultaneously eliminating bureaucratic bottlenecks. The Act amends certain Legislations crucial to the Nigerian Business environment including The Trade Marks Act, Cap. T13, Laws of the Federation of Nigeria, 2004. Amended provisions of the Trade Marks Act: The Act amended the definition of “trade marks” thus: (a) 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 a 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 shape of goods, their packaging and combination of colours ; and (b) definition of goods under was also expanded to include “services” Major impact of the amendment; Before the amendment, the Trade Marks Act did not define “goods”. The Act has now included the definition of goods to include “services”. Comments Before the instant amendment, registration of service marks in Nigeria was a subject of controversy, given that the Act did not expressly provide for the registration of service marks. In 2007, the Minister of Commerce and Industry in the exercise of his power under section 45 of the Trade Marks Act, amended the Trade Marks Regulations (the “Regulations”) by adding service classes to the original classification of goods in fourth schedule of the Regulations. The referenced amendment by the Minister in 2007, had been argued by some Intellectual Property experts to be outside the purview of the powers granted the Minister under the Act, as they posited that the power of the Minister under the Act was to classify goods for the purpose of registration. That the meaning of goods in normal usage does not include services. That therefore the Minister lacked the power to add service classification to the existing goods classifications. This amendment has therefore put paid to that controversy. The meaning of “goods” has now been defined to include “services”. It further defines “trade mark” to also include shape of goods, their packaging and combination of colours. This is also a welcome development as the entire getup/packaging of a product, colours and shapes of goods are now registrable under the Act, which features were not expressly provided for in The Trade Marks Act, Cap. T13, Laws of the Federation of Nigeria, 2004. Despite the best intention of the legislature, the mode of the expansion of the definition of “trade mark”, to include shape of goods, their packaging and combination of colours has created a bit of controversy. This is because under the Act, a “mark” was defined to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof” which are basically two dimensional objects. Therefore, the purported inclusion of three dimensional objects, such as shape of goods, and packaging of goods in “marks” under this new Act without first amending the definition of “mark”, creates some incongruity. However, it is noted that since the intention of the legislature was to expand the meaning of a “mark” under the Act, it is hoped that the Registrar of Trade marks would act accordingly when interpreting this provision. In the meantime, we intend to approach the Court in the coming weeks, to seek judicial interpretation of this provision for clarity purposes. Overall, the Act is a commendable development as it seeks to establish a smooth method of running business for Companies and Business owners in Nigeria. . |