One of the more consistent intellectual property management strategies that global brands deploy to prevent a dilution of their trademarks and to increase the value of their trademarks is to file a Defensive Trademark. If you are thinking about preventing dilution and increasing the value of your trademark, you should consider filing a Defensive Trademark.
What is a Defensive Trademark and How is it different from a “Regular” trademark?
When you file a “regular” trademark, the assumption is that you are using that trademark in connection with a particular business activity. When you file a Defensive Trademark, you are not necessarily using that trademark in connection with one particular business. Instead, you are filing the Defensive Trademark to prevent other persons from using your existing trademark in connection with other types of businesses. Think of a Defensive Trademark as an update to an existing Trademark. Filing a Defensive Trademark is particularly important because Nigerian law provides trademark protection on a business-by-business basis. In technical terms, on a class-by-class basis. This means, if, for instance, you register a fintech trademark for use in connection with a banking business, that fintech trademark will not automatically enjoy protection under another class of business, say “software development” or “manufacturing”, except you file for trademark protection, in those other classes.
What is the legal requirement for filing Defensive Trademarks?
You must be able to demonstrate that the trademark is well known to the extent that it’s use in relation to other goods would likely be taken as an indication or connection between those goods. It is useful to note that the common practice of simply registering new trademarks across multiple classes does not meet the legal requirement of Defensive Trademark registration. Such trademark registrations are therefore liable to challenge.
Are Defensive Trademarks Registrable under Nigerian Trademark law?
Yes. It is important to note that the general rule in Nigeria is that the applicant who registers a trademark must have a bona fide intention to use the trademark in connection with the business or goods in respect of which the trademark was registered. The implication of this general rule is that, a trademark that is filed but not in use is generally vulnerable to opposition. A third party may also be able to successfully challenge such “unused” trademark on the grounds of bad faith. The bona fide rule is captured in section 31 of the Nigerian Trademarks Act. The important point to note here is that, Defensive Trademarks are an exception to the bona fide rule in Nigeria because with a Defensive Trademark, there is no bona fide requirement to use your existing trademark in connection with all types of businesses, yet no one else will be able to use the trademark in connection with other businesses or challenge your use of the said trademark, because it’s a Defensive Trademark.
See Section 32 (1) below for more clarity:
“Where a trademark consisting of an invented word or invented words has, as respect any goods in respect of which it is registered and in relation to which it has been used (in this subsection referred to as “the familiar goods”), become so well known that it’s use in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to familiar goods, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the familiar good, be registered in his name in respect of those other goods as a defensive trade mark, notwithstanding that the proprietor registered in respect of the familiar goods does not use or propose to use the trademark in relation to those other goods, and notwithstanding anything in section 31 of this Act; and while so registered, the trade mark shall not be liable to be taken off the register in respect of those goods under section 31 of this Act” .
Why Should You consider a Defensive Trademark?
Firstly, in our experience, there usually comes a time in the life of a brand/business where Defensive Trademarks filing becomes absolutely necessary. Two strategic objectives also readily come to mind. The first, is the need to prevent trademark dilution. What is a trademark dilution? According to the International Trademarks Association, trademark dilution refers to “the unauthorized use of and/or application for a trademark that is likely to weaken the distinctive quality of or harm a famous mark”. Imagine, in the example that we provided above, that a third party uses the said fintech trademark in relation to another business, say, manufacturing. This creates some confusion in the mind of public as members of the public will likely associate both brands, for good or for bad. Registering Defensive Trademarks also increases the value of your trademark estate as owners of Defensive Trademarks are generally able to leverage trademark licensing and monetization opportunities across other business areas.
This legal update is not intended to be taken as legal advice. Please seek professional legal advice specific to your situation. For more information or consultation regarding the content of this article, please reach out to the undersigned or to your usual Balogun Harold.
