THE PRINCIPLE OF BONA FIDE USE OF TRADEMARK AND ITS APPLICABILITY IN NIGERIA.

By Sunday Jattu

INTRODUCTION

Trademarks grant exclusive rights to the use of names, logos, and symbols as identifiers in the market, safeguarding them for their owners. "Bona fide use" of trademarks is crucial, ensuring that consumers can readily identify goods associated with a particular trademark. Failure to utilize a trademark or demonstrate intent to use it at the time of registration may lead to its cancellation. This principle has been instrumental in the cancellation of trademarks in various jurisdictions. This discussion explores its application within Nigeria's legal framework.

APPLICABILITY IN NIGERIA

The burden of proof to establish a lack of bona fide use of a trademark lies with the claimant. Examining relevant laws elucidates the application of this principle in Nigeria

Section 31 of the Trademark Act provides as follows:

(1) Subject to this and the following section, a registered trademark may be taken off the register in respect of any of the goods in respect of which it is registered on an application made by any person concerned to the court or, at the option of the applicant and subject to section 56 of this Act, to the Registrar, on either of the grounds set out in subsection (2) of this section.

 (2) The said grounds are-

 (a) that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has been no bona fide use of the trademark in relation to those goods by any proprietor thereof for the time being up to the date one month before the date of the application; or

 (b) that up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trademark was registered and during which there was no bonafide use thereof with those goods by any proprietor thereof for the time being.

It is apposite to state from the above that Section 31 of the Trademark Act outlines grounds for removing a registered trademark, particularly highlighting the lack of bona fide intention for use and non-use of the mark.

Section 31(2)(a) requires the claimant to demonstrate two elements: firstly, that the trademark was registered without bona fide intent for use, and secondly, that there has been no bona fide use of the mark in relation to the goods in question by any proprietor up to one month before the application for removal. Both elements must be concurrently proven.

The Court of Appeal in P&G CO v. GLOBAL SOAP & DETERGENT INDUSTRIES LTD & ORS (2012) LPELR-8014(CA) held as follows;

“To make a finding of non-use of the trademark under Section 31- (2) (a), two conjunctive elements must exist. They are:

1. At the time of registration, the trademark was registered without bona fide intention to use same; and

2. A month before the application to remove a trademark is made, there has been no bona fide use of the trademark in relation to those goods by a proprietor thereof. It is my humble but firm view, after reviewing the evidence that there was no proof before the trial Court that at the time of registration, the Appellant had no intention of bona fide use of the trademark. We must remember that the onus of proof is on the 1st Respondent seeking to have the trademark removed from the Register for non-use, to prove both essential elements of non-use. Needless to say, the word 'and' in Section 31 (2) (a) shows that both elements are conjunctive and must be so construed. See NDOMA - EGBA V. CHUKWUOGOR supra

The implication of the above provision is that the court has emphasized the conjunctive nature of these requirements. Therefore, the claimant must prove both the lack of intent at the time of registration and the absence of use up to one month before the application for removal.

In essence, Section 31(2)(a) necessitates action that a proprietor must use his trademark before registration or one month after registration. If not used, a claimant can apply for the mark to be removed from the register for lack of bona fide use of the trademark under section 31(2)(a).

Regarding Section 31(2)(b), it addresses continuous non-use over five years, dating back from within one month of the application.  Simply put, the computation of the five years of non-use begins within one month of the application for removal. The Court of Appeal clarified that this five-year period is retrospective, not calculated from the date of registration.

The Court of Appeal in P&G CO v. GLOBAL SOAP & DETERGENT INDUSTRIES LTD & ORS (supra) held as follows: “In the first instance, it is clear that in Section 31 (2) (b), the lawmaker intends that five years counting backward from within a month of the application is the computation time and not five years from the date of registration.”

The court further states as follows:

“A recurring factor in both grounds Section 31(2) (a) & (b) is that non-use is computed from a month before the application to expunge the trademark is made. The difference lies in the first ground dating back to the time of registration, while the second ground dates back five years. In essence, the first ground consists of two elements that must exist concurrently before an order of removal can be made. The second ground has just one element: a continuous period of non-use for five years preceding a month before an application for removal is made.”

The claimant cannot just deploy the use of section 31(2)(a) by stating that the Defendant had no ab initio intention to use the trademark in respect of some goods at the point of registration of the mark. From the interpretation of the court, this provision can only be used a month from the date of registration of the trademark. Once it is over a month since the mark was registered the claimant cannot rely on section 31(2)(a).

Also, the claimant may not be able to deploy section 31(2)(b) to its advantage if the defendant has been using the trademark for 5 years dating back from within a month, the claimant decides to institute an action of lack of bona fide use of the trademark in court.

CONCLUSION

The principle of bona fide use of trademarks in Nigeria demands stringent evidence to establish a lack of intent and non-use. While challenging a trademark's registration due to lack of initial intent may be challenging, prompt action within one month of registration is crucial. Similarly, continuous non-use over five years, dating back from within one month of the application, can lead to the successful removal of the trademark. As intellectual property laws evolve in Nigeria, testing these principles in courts will contribute to the development of the country's legal framework, aligning it with global standards.