Brand Protection

Our brand protection/Anticounterfeiting practice team specializes regularly designs, plans and executes efficient strategies to protect our clients’ brands. We combine diverse tools such as market investigations/raids, trade mark opposition, border controls and civil court actions/orders with our market intelligence and sector regulator collaboration to provide real solutions that deter counterfeiters.

The brand protection team functions within our Litigation & Dispute Resolution Practice Group and comprises highly experienced team of expert lawyers, paralegals, and investigators dedicated to designing and executing specialized anti-counterfeiting campaigns to meet each client’s unique market challenges.

Anticounterfeiting

Other than traditional civil litigation solutions, we provide anticounterfeiting services such as advisory opinions, discreet market/onsite investigations, issuance of cease & desist letters, and market raids/regulatory enforcement actions which often effectively combat the offending use/infringement of our client’s intellectual property.

We also engage in:

• Prosecuting administrative actions at the Corporate Affairs Commission in relation to the use of confusingly similar trade names and trade marks;

• Negotiating amicable settlement and extracting relevant written non-violation undertakings from counterfeiters and offenders; and

• Organizing training, awareness and sensitization campaigns in the markets.

Trade Mark Opposition

Our team is dedicated to protecting our clients’ trade marks by opposing the registration of any conflicting marks or defending any opposition against our clients’ trade marks at the Nigerian Trademarks Registry.

We have considerable experience in prosecuting trade mark cancellations at the Registry and regular courts and have over the years managed over 1,000 trade mark opposition cases and cancellation actions.

We also provide the following services:

• Watching service for the Trademark Journal;

• Advising on defending or opposing trademark applications;

• Initiating trademark opposition actions against offending trademark applications;

• Defending trademark opposition actions;

• Drafting petitions and making representations before the Registrar of Trademarks;

• Negotiating amicable settlement between opposing parties; and

• Extracting written undertakings from offenders to refrain from infringing on clients’ Intellectual Property rights.

Intellectual Property Litigation

We regularly conduct civil court proceedings such as trade mark appeals/cancellation suits, trade name & trade mark/copyright infringement suits and passing off actions. The Anton Piller/Search & Seizure orders of court obtained in these proceedings often hit infringers “below the belt” and constrain them to the negotiation table to save our client’s the time and money of protracted litigation.

We also hold watching briefs on behalf of our clients and advise prosecutors in criminal proceedings against counterfeiters.

Some notable cases conducted over the years include:

• Representing a global telecoms company in prosecuting IP right-enforcement litigations against offenders dealing in importation, marketing, sale, and distribution of counterfeits of its mobile phones and accessories in Nigeria;

• Representing a leading American multinational conglomerate and its Nigerian Joint Venture company in 3 civil suits involving the protection and defence of its trademarks, trade name, and brand name in Nigeria;

• Representing a US international banking group in a trade mark infringement and passing off suit against a rival financial services provider.

• Advising and representing a multinational airline carrier in a trade mark/name and passing off suit against a local air transport company.

• Successfully overturned the decision of the Registrar of Trade Marks in a trade mark appeal on behalf of our client, a US cosmetics manufacturer wherein the appellate court revoked five unlawful trademark applications.

• Advised and represented a third-party content provider for mobile telecom networks in Nigeria in a landmark case on the patentability of a telecoms lottery service.