What are service marks? In very simple terms, they are trademarks that are used to identify and distinguish services. Service marks are registrable in many jurisdictions across the world including Nigeria. Registration typically confers a statutory right on the owner of the mark which is enforceable within the territory in which the mark is registered. Registration remains a valid form of protection against imitation and is often based on actual use or a bona fide intention to use the mark in the course of trade. A service mark is used when displayed in the course of providing services or in advertising of services. An example of a service mark in Nigeria is “aero” or “Arik” which are visible on aircrafts that belong to Aero Contractors Company of Nigeria Limited and Arik Air Nigeria Ltd.
The Nigerian Trade Mark Act of 1965 which is the primary legislation for trademarks omits to either define the term “service marks” or include “services” in the definition of trademarks. As a result the scope of trademark protection as contained in the Nigerian Trademark Act, applies only to goods.
On the 19th of April, 2007, the Honourable Minister of Commerce via regulation (pursuant to section 45 of the Trade Mark Act), ordered that the classification of goods under which trademarks were registered be extended to include services (cleverly classified as intangible goods), in accordance with the 9th Edition of the Nice Classification of goods - The Nice Classification is administered by the International Bureau of the World Intellectual Property Organization and consists of 34 classes for goods and 11 classes for services for the purposes of registering trademarks and service marks. The move by the Honourable Minister of Commerce was objected to and criticized by many on the grounds that only the National Assembly which is the highest elective lawmaking body in Nigeria, had the legal authority to incorporate services into the classification of goods applicable in Nigeria. Accordingly any extension of the classification of goods could only be achieved through an Act of the National Assembly.
Thereafter, a move was made to validly incorporate service marks in the legal framework for trademarks in Nigeria. Thus, in 2011, Gazette No. 54, Volume 95 dated the 4th of September 2008 was published which extended the classification of goods to include services pursuant to the powers of the Honourable Minister of Commerce and Industry under Sections 42 and 45 of the Trademark Act and Regulation 5 of the Trademark Regulations. Although the Gazette was published in 2011, its efficacy was from 2008.
Despite the above development, concerns still persist about the validity of service mark registrations. This is because, Sections 42 (1) of the Act which empowers the Honorable Minister to prescribe regulations for empowering the Registrar of Trademarks to amend the register for the purpose of adapting the designation or classes of goods in respect of which trademarks are registered to any amended or substituted classification that may be prescribed. Other subsections of that provision (i.e. Section 42) do not relate to the powers of the Honourable Minister. In other words, Sections 42 does not appear to confer powers on the Honourable Minister to extend classification of goods to include services. Furthermore, Section 45 sets out the scenarios that may be regulated by the Honourable Minister which include classifying goods for the purpose of trademark registration. So the question remains, was the incorporation of services into classification of goods done pursuant to the powers of the Honourable Minister as provided for in Section 45?
Gazette No. 54 is a subsidiary legislation while the Trademark Act is the principal legislation. The latter does not provide for service marks for the purpose of protection in Nigeria. The question therefore is, can a subsidiary legislation cure an omission in a principal enactment? Unfortunately, there is no positive judicial pronouncement on the validity of registered service marks in Nigeria and the exact legal position remains uncertain.
However, both the private and public sectors have taken steps to try and amend the existing trademark law. The IPCOM bill for example, which is a private sector initiative that commenced more than 2 decades ago, seeks to establish an Intellectual Property Commission and introduce revisions to the Trademark law (including an expansion of the definition of trademarks to cover “services”) and other intellectual property laws. There are several versions of the bill and attempts have been made to harmonize them into a single, comprehensive bill. The public sector, through the Federal Ministry of Justice, recently embarked on the drafting of a bill to merge the Department of Commerce and Industry (which administers trademarks) with the Nigerian Copyright Commission. The bill will include substantive reviews to the current Trademark law. It is not clear at this time what effect this will have on the IPCOM bill.
Whether by the private or public sector, the fact of the matter is that the Nigerian Trademark law will hopefully be reviewed sooner rather than later. Both the government and the private sector recognize the urgent need to bring our law in line with the current trends in commerce. Once this is achieved, the current uncertainty of the validity of service marks will be a thing of the past. This would only mean greater protection, greater investments and an overall improvement in the health of the Nigerian economy.
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