Protecting foreign trademarks: legal strategies against wrongful trademark registrations in Nigeria

NIGERIA

Legal updates: case law analysis and intelligence

• Local businesses may try to exploit the territoriality principle by registering trademarks that are similar or identical to popular or well-known foreign marks

• Two recent decisions clarify that trademark registration is not a complete defence to a claim of passing off, even by an unregistered trademark owner.

• Owners of unregistered trademarks with goods or services extending to Nigeria still have legal remedies (eg, under the tort of passing off)

Trademark protection in Nigeria follows the territoriality principle. This means that a trademark is often protected in Nigeria if the trademark owner has obtained a trademark registration locally. Many foreign owners of popular or well-known trademarks are yet to seek registration in Nigeria, and their local business rivals sometimes exploit the territoriality requirement under Section 3 of the Nigerian Trademarks Act by surreptitiously registering trademarks that are similar or identical to the trademarks of the foreign Onyedikachi Agbara Jackson, Etti & Edu 06 August 2024 companies. Such registrations by local entities pose a complete defence to claims for trademark infringement (Section 5(4) of the Trademarks Act). However, some recent judicial decisions in Nigeria indicate the disposition of local courts to protect the rights of foreign trademark owners; we highlight two such decisions below.

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