Quick Question IF My Client has a domain name xyz.ng and registered it 5 years ago or even yesterday and still owns and renews it yearly and another person goes and trademarks the xyz name AFTER my cleint had registered that domain and that person wants to claim the xyz.ng and is getting a lawyer to that effect ! . what is NIRA’s stand on this pls . Thanks !
Thank you for sharing the question; we appreciate you raising it.
While trademark rights are generally recognised and carry significant weight, in the domain name context—and specifically under the NiRA Dispute Resolution Policy (NDRP)—there is no automatic rule that a trademark owner, particularly one whose rights were acquired after a domain name has already been registered, takes precedence over an existing domain holder.
Under the NDRP, each dispute is assessed on its own facts. A complainant is required to show that the domain name is identical or confusingly similar to a mark in which they have rights, that the registrant has no rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith. Where a domain name was registered earlier and has been consistently renewed and legitimately used, it would generally be difficult to establish bad faith at the point of registration based solely on a later-acquired trademark.
Accordingly, while trademark ownership is an important consideration, it does not by itself override an earlier domain name registration. Parties who feel aggrieved may, of course, pursue the matter through the dispute resolution process provided under the NDRP.
Trademark rights are important, but in domain disputes, timing and bad faith are decisive
I just heard the case btw Some dude Blord and That VDM guy Blord Allefgedly went to trademark the word ratel used by VDM . if he can trademark ratel he might as well trademark Lion .Cos a Ratel is an animal a genric name . Anyway Thanks NIRA for the Explanation .Regards
Those guys are just playing, but it’s a good reminder and a wake-up call that there is no ignorance in the law! VDM has lost the name, and for the domain owner, if care is not taken, the person will lose the domain.
Names are generally not owned exclusively by anyone and can be used in a generic sense, depending on context and purpose. What is protected under trademark law is how a name is used, the class of registration, and the specific goods or services it represents.
For example, Blord registered “Ratel” for the purpose of his exchange app, while VDM registered “Ratel Movement” for a different purpose. Both can potentially coexist as long as their uses do not cause confusion and fall under different trademark classes.
In most cases, you cannot trademark a generic word alone without additional identifiers or descriptions. Trademark protection usually applies to the name combined with its purpose, branding, or class of service, not just the word itself.
So yes, it’s less about the name alone and more about the purpose, usage, and trademark classification.
Thanks …but you should not be allowed to Trademark The Word Ratel ! Might as well trademark the Word HoneyBadger The exact Same Meaning of a Ratel IT is an English Word lol This is Nigeria Tho
You can safely say this:
1. RATEL (word mark) generally offers the broadest protection for the word in the registered market because stylisation and device changes do not change the fact that the word is being used.
2. RATEL + device (composite) does not require exact copying for infringement. The question is whether the other party’s mark, taken as a whole, is likely to cause confusion.
3. Two parties can both have:
RATEL + square honey badger device, and
RATEL + triangle stripes device, but the risk of infringement depends on whether either party owns the RATEL word mark, and whether the goods or services are the same or closely related, and whether the overall use is likely to confuse.
Importantly, registration is not a licence to deceive. Even a registe…
No. There is no general prohibition on trademarking English words in Nigeria. A trademark can be a word, and the law does not exclude English as a language category.
What does happen is that many English words fail for other reasons, mainly lack of distinctiveness.
What the law actually restricts (not “English words”) : an English word may be refused if it is caught by the usual “absolute grounds”, for example:
1. it is descriptive of the character or quality of the goods or services (like “SWEET” for candy),
2. it is a geographical name or a surname in its ordinary meaning,
3. it is deceptive, scandalous, or its use is otherwise prohibited by law,
4. it is a commonly used chemical substance name (specific statutory bar).
Thanks ! so does a trademark in nigeria over ride a trade mark abroad ? if i tradmark ratel in england whose TM supersedes thanks for this lecture 🙂
No. A Nigerian trademark does not override a UK trademark, and a UK trademark does not override a Nigerian trademark.
How it works in practice
1. Trademarks are territorial. A mark registered in Nigeria gives protection in Nigeria only, and a mark registered in the UK gives protection in the UK only. So there is no superseding globally. Each registration is enforced in its own territory.
2. You can end up with different owners in different countries because the registers are separate and territorial. That said, if either side tries to trade in the other country (including selling into that market online), they can run into trouble there.
3. If you file in the UK first, you may be able to claim priority in Nigeria. Nigeria is a Paris Convention country, and if you file an application in Nigeria within 6 months of your first application for the same mark in another Convention country (like the UK), you can usually claim that earlier foreign filing date as your priority date. Note that priority is based on the foreign application date (not the foreign registration date), and you still need to complete the Nigerian filing and registration process. Also, damages generally cannot be claimed for infringement that happened before the Nigerian registration date.
4. There is no Madrid “one filing covers all” route for Nigeria. Nigeria is not currently in the Madrid Protocol system, so you generally file nationally in each country where you want protection.
Quick example:
If you trademark RATEL in England, that protects you in the UK. To protect RATEL in Nigeria, you still need a Nigeria filing and registration.
If someone already owns RATEL in Nigeria, your UK trademark does not cancel it. You would have to challenge it using Nigerian procedures and grounds.
Real world example (Apple in China)
A famous example of how territorial trademarks can create problems is Apple’s iPad. Even though Apple owned iPad branding elsewhere, a company called Proview held the “iPad” trademark rights in China, and Apple ultimately paid about USD 60 million to settle the dispute and secure the trademark in China.
Trademarking and registering a brand name involves a complex intersection of national laws and international treaties. In Nigeria, the Trademarks Act (Cap T13 LFN 2004) governs these rights, while global disputes are often managed through WIPO (World Intellectual Property Organization) and ICANN (Internet Corporation for Assigned Names and Numbers).
20 Rules of Trademarking in Nigeria (Dos and Don’ts)
The Dos
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Do conduct a preliminary search: Before filing, check the Trademarks Registry in Abuja to ensure the name isn’t already taken or “confusingly similar” to an existing one.
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Do choose a “distinctive” mark: Invented words (e.g., Kodak) or arbitrary words (e.g., Apple for tech) are much easier to register than common names.
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Do register in the correct “Class”: Nigeria uses the Nice Classification (45 classes). Ensure you register in the class relevant to your industry (e.g., Class 25 for clothing).
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Do file your application early: Nigeria follows a “first-to-file” system. Ownership is generally granted to the person who files first, not necessarily the one who used it first.
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Do monitor the Trademark Journal: Once accepted, your mark is published. You must watch for others trying to register similar marks during the 2-month opposition period.
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Do use the “TM” vs. “®” symbol correctly: Use TM while your application is pending and ® only after you receive your Certificate of Registration.
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Do keep your Certificate of Registration safe: This is your primary legal proof of ownership in Nigerian courts.
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Do renew your registration: Nigerian trademarks are valid for 7 years initially and must be renewed every 14 years thereafter.
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Do record any assignments: If you sell your brand or change your company name, you must officially record this at the Registry to maintain legal validity.
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Do use the mark in commerce: If a trademark is not used for a continuous period of 5 years, a third party can apply to have it cancelled for non-use.
The Don’ts
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Don’t use generic terms: You cannot trademark the word “Bread” for a bakery or “Soap” for a cleaning product.
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Don’t use deceptive marks: Avoid names that mislead the public about the nature, quality, or geographical origin of the goods.
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Don’t use scandalous or “contra bonos mores” names: Anything considered immoral or offensive to public policy will be rejected.
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Don’t use national symbols: You cannot trademark the Nigerian Flag, the Coat of Arms, or royal emblems.
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Don’t use chemical substance names: Names of chemical elements or compounds are generally prohibited for pharmaceutical trademarks.
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Don’t use surnames or geographical names: Unless they have acquired “secondary meaning” through years of exclusive use, these are usually rejected.
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Don’t assume a CAC registration is a trademark: Registering a business name with the Corporate Affairs Commission (CAC) does not give you trademark protection.
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Don’t ignore infringement: If you find someone using your mark, you must take legal action (like a Cease and Desist) or you risk “diluting” your brand’s legal strength.
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Don’t register in bad faith: Registering a name just to block a competitor or sell it back to them (squatting) can lead to the mark being invalidated.
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Don’t wait until you’re “big”: Many startups wait until they are successful to register, only to find a competitor has already claimed the name.
Dictionary Words & Domain Names
Must you register a dictionary word if you own the domain? Owning a domain name (e.g., apple.com or bread.ng) does not grant you trademark rights.
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Dictionary Words: You can trademark a dictionary word only if it is arbitrary (the word has nothing to do with the product, like Amazon for retail). If the word is descriptive (like Sweet for candy), you generally cannot own it exclusively.
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The Conflict: If you own the domain but haven’t trademarked the name, a competitor could potentially register the trademark and then try to sue you for “Trademark Infringement” or “Passing Off.”
20 International Laws and Treaties on Trademarks
These are the primary legal instruments and agreements that govern global name registration:
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Paris Convention (1883): The foundation of international IP; allows a “Right of Priority” (file in one country, get 6 months to file in others).
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Madrid Protocol (1989): Allows you to file one application to protect your mark in over 120 countries simultaneously.
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TRIPS Agreement (1994): Sets minimum standards for IP protection that all WTO members must follow.
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Nice Agreement (1957): Establishes the international classification of goods and services (45 classes).
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Singapore Treaty (2006): Modernizes trademark office procedures (electronic filing, etc.).
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Trademark Law Treaty (1994): Simplifies and harmonizes administrative procedures across different countries.
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WIPO Convention (1967): Established the World Intellectual Property Organization.
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Vienna Agreement (1973): Establishes a classification for marks that consist of or contain figurative elements (logos).
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Madrid Agreement (Source of Goods) (1891): Governs the prevention of false or deceptive indications of source.
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Hague Agreement: While primarily for industrial designs, it often overlaps with 3D trademarks.
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Nairobi Treaty (1981): Protects the Olympic Symbol from unauthorized commercial use.
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Lisbon Agreement: Protects “Appellations of Origin” (e.g., Champagne, Scotch).
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UDRP (Uniform Domain-Name Dispute-Resolution Policy): The global law for resolving domain vs. trademark fights.
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Berne Convention: Primarily for copyright, but protects the “artistic” element of logo-based trademarks.
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Pan-American Convention (1929): A regional trademark treaty for the Americas.
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EU Trade Mark Regulation (EUTM): A single registration covering all 27 EU member states.
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OAPI (Bangui Agreement): A single registration covering 17 African countries (mostly Francophone).
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ARIPO (Banjul Protocol): A registration system for English-speaking African countries.
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Cybercrimes Act (Nigeria, 2015/2024): Specifically criminalizes cybersquatting.
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Anticybersquatting Consumer Protection Act (ACPA): A key US law often cited internationally for domain disputes.
Can someone claim your domain name if they trademark the name later?
This is the most common dispute in the digital age. The answer depends on Timing and Intent.
The Legal Perspective (Nigeria & International)
Under the UDRP (International) and the Nigerian Cybercrimes Act, a trademark owner can only take your domain if they prove all three of these points:
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Confusion: The domain is identical or confusingly similar to their trademark.
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No Legitimate Interest: You have no real reason to own the name (e.g., you aren’t actually running a business under that name).
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Bad Faith: You registered the domain specifically to sell it to them or to disrupt their business.
Crucial Rule: If you were using the domain name in good faith for years before they registered their trademark, you have a “Prior Use” defense. In most cases, they cannot take it from you because you have a “legitimate interest” and you did not register it in “bad faith.”
However, if they have a “Well-Known Mark” (like Nike or Coca-Cola), they can often claim the domain even if you had it first, under the theory that you should have known the name was iconic.
