By Christian Aniukwu

There is an ongoing trend at the Nigerian Trademarks Registry regarding recordal of assignment of unregistered trademarks (pending trade mark applications). Pending trade marks are trade mark applications that are yet to be registered and issued with certificates of registration.
We have in this paper analyzed the provisions of the relevant laws in this regard and our submission is that the Trade Marks Act does not contemplate the recordal of assignment of pending trade mark application but that of registered marks. Recordal of assignment is the official registration of an assignment of a trade mark at the Trade Marks Registry whereof the assignee of the trade mark is registered in the Trade Marks Register as the owner/proprietor of the trade mark. Following is our analysis.

Section 26 of the Trade Marks Act (hereinafter “the Act”) provides for the assignability of trade marks. The said section provides:

(1) Notwithstanding any rule of law or equity to the contrary, a registered trade mark shall after the commencement of this Act be assignable and transmissible either in connection with the goodwill of a business or not.
(2) A registered trade mark shall after the commencement of this Act be assignable and transmissible in respect either of all the goods in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods.

(3) Subsections (1) and (2) of this section, shall apply in regard to an unregistered trade mark used in relation to any goods as they apply in regard to a registered trade mark registered in respect of any goods, if –

(a) at the time of the transmission of the unregistered trade mark it is used in the same business as a registered trade mark; and

(b) it is assigned or transmitted at the same time and to the same person as that registered trade mark; and

(c) it is so assigned or transmitted in respect of goods all of which are goods –

(i) in relation to which the unregistered trade mark is used in that business; and

(ii) in respect of which the registered trade mark is assigned or transmitted.

The provisions of the Act are clear to the effect that only registered trade marks are assignable and transmissible to third parties save for one exception – we will come back to the exception shortly. The Act does not contemplate the recordal of assignment of a pending trade mark application. The reasons for this are apparent. The fact that a trade mark has been filed is not an assurance that the trade mark will proceed to registration, or proceed to registration without an incidence. A pending trade mark could be refused; opposed successfully and deemed abandoned by the Registry; or abandoned by the Applicant. In each of these instances the said trade mark will not proceed to registration. Envision a situation where a trade mark which falls within any of these instances have been assigned to a third party and a certificate of assignment issued to the assignee with a pending application number – the assignment becomes worthless by virtue of the fact that the trade mark was not ultimately registered.

Other sections of the Act support the proposition that only the assignment of registered trade marks ought to and should be recorded at the Registry.

Section 29 of the Act provides as follows:

Subject to the provisions of this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for an assignment thereof.

Section 30 (1) of the Act provides as follows:

Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall make application to the Registrar to register his title, and the registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register.

From the provisions above, the recordal of an assignment should and ought to be for a registered trade mark by a registered proprietor. The important question now is, when does a trade mark qualify as a registered trade mark and an applicant qualify as a registered proprietor. The answer is as provided for under section 22 of the Act reproduced below.

Section 22 of the Act provides as follows:

(1) When an application for registration of a trade mark in Part A or in Part B of the register has been accepted, and either –

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be.

(3) On the registration of a trade mark the Registrar shall issue to the applicant a certificate of registration in the prescribed form sealed with the seal of the Registrar.

A trade mark becomes a registered trade mark when it has gone past the opposition period and, either that it was not opposed or unsuccessfully opposed, registered in the Register of Trade Marks. The proof that this act has been completed is by the issuance of a certificate of registration (Section 22 (3)). It follows therefore that unless a trade mark is registered in the Register of Trade Marks, a recordal of such assignment cannot be registered by the Registrar of Trade Marks or recognized by him. What is more? Regulations 73, 74 and 77 of the Trade Marks Regulations also reiterate this point. There is only one exception to this rule. This exception creates a situation where an unregistered trade mark could be assigned to a third party and still be recorded at the Registry.

Section 26 (3) of the Act creates a situation where a registered proprietor of a trade mark seeks to assign both a registered trade mark and unregistered trade mark to the same assignee. In this case, such assignment and recordal could be done in group. There are qualifications to this. First, there must be an assignment of a registered trade mark alongside an unregistered trade mark to the same assignee. Secondly, as at the time of the assignment/transmission of the unregistered trade mark it is used in the same business as a registered trade mark. Thirdly, the unregistered trade mark is assigned in respect of goods all of which are goods in relation to which the unregistered trade mark is used in that business and in respect of which the registered trade mark is assigned.

It is therefore our submission, that an assignment cannot be recorded by the Registry for a yet-to-be registered trade mark. If an unregistered trade mark is to be assigned and recorded at the Registry, the qualifications in the Act should be adhered to.

We implore the Registrar of Trade Marks to issue a policy statement on whether the Registry would continue to record assignments and issue certificates for unregistered trade marks or to abide by the strict dictates of the law.