Oct 20, 2018

IP ABC—Does a registered trademark automatically die upon non-use for a long period? | Infusion Lawyers



Question

Hello, I am Ofure Ighalo, CEO of EduBit, an edutech startup. Six years ago I had the idea of an edutech product, ‘Aunty’. We registered the name and logo as trademark of EduBit. But after over 6 years of designing and redesigning the idea, ‘Aunty’ wasn't launched. After finally getting venture capital for Aunty, we were about to launch on 18/08/2018 when a friend of ours in the startup space drew our attention to a similar product also named ‘Aunty’. Considering that this could jeopardize our launch plans and investment drive, we quickly contacted the company behind this ‘Aunty’ to desist from further use of our registered trademark. But to our shock, the company, Tekwando, claimed that regardless of EduBit's registration of the mark, ‘Aunty', EduBit has no right to stop their company from using the mark! According to them, while EduBit may have the trademark certificate, it is mere paper because they are the ones who have been in the edutech market, using the name for over 3 years. This sounds crazy! Please tell us this is not true! Is it true that we have lost the registered mark?




Answer


The Answer is No. The owner of a registered trademark does not automatically lose the right to the mark due to non-use. A party relying on non-use of a mark must have successfully applied to the Federal High Court or trademark registrar to expunge the registered trademark from the register on the ground of non-use. Without this, the mark is presumed to be alive and active, and consequently unauthorized use of the trademark may amount to trademark infringement.




Non-use of a registered trademark is dangerous to the health of a trademark and may eventually kill it.

Although a registered trademark is valid for 7 years and renewable from time to time, it must at least be alive and active at any point within any 5-year periods otherwise it may die.

Trademarks die when they are either registered without any bona fide intention on the applicant's part to use the mark in relation to the applicant's goods or services or when they are not in use for a continuous period of 5 years. This is the position of the law under section 31(2) of Nigeria's Trademarks Act.

In your case, EduBit came up with the idea and name for its ‘Aunty’ edutech app. Although you registered it as trademark, for over 6 years you failed to neither launch the app nor put it to use. Consequently, ‘Aunty’ was born but never lived fully due to non-use.

As long as EduBit failed to use its ‘Aunty’ trademark for more than a minimum period of 5 years, this is a ground for losing the mark. Therefore, section 31(2)(b) of the Act specifically applies—your ‘Aunty’ trademark is ripe for removal from the trademark register.
 

But a trademark does not automatically elapse upon non-use. It must be taken off the trademark register by a court of law or the trademark registrar upon application by a “person concerned”.

Although trademarks do die, it is not at the discretion of any person to declare the death of a trademark for any reasons and then begin to use the trademark. If it were so, business competitors may become even more desperate in killing their competitors’ brands. This would amount to unfair competition.

So rather than allow any “person concerned” to declare the death of a trademark on the ground of non-use and the same person resurrects the dead trademark for his or her own use, the law requires such “person concerned” to either apply to the Federal High Court or trademark registrar. This enables the court or registrar have the opportunity of determining the status of the trademark.

This is why section 31(1) of the Trademarks Act requires that a registered trademark may be taken off the register in respect of the goods or services it is registered “on the application made by any person concerned to the court”. If the matter is not already pending in court, an applicant has the option of bringing the application before the trademark registrar. If the applicant chooses to apply to the trademark registrar, the registrar's decision is subject to appeal to the court.

Therefore, Tekwando has no right to simply start using EduBit's allegedly unused ‘Aunty’ by relying on non-use. Tekwando must first apply to either the trademark registrar or Federal High Court. Until Tekwando does so and gets a favourable decision, its act amounts to trademark infringement. It is tantamount to burying a trademark alive, regardless of the fact that the mark has been in a 5-year coma. Tekwando must allow either the trademark registrar or court do the mercy killing, if the allegation of non-use of the mark is proven.



Finally, only a “person concerned” is entitled to apply to the trademark registrar or court to expunge a registered mark from the register for non-use.

The applicant must be a concerned person. This implies legal or equitable interest.

Section 31(1) of the Act refers to the applicant as a “person concerned”. This is not any person. Is Tekwando a "person concerned"?

Tekwando has interest in the use of ‘Aunty’ for a similar edutech product in the Nigerian market where EduBit's ‘Aunty’ product is registered as trademark. Use of the same ‘Aunty' mark by both parties for similar products may infringe on the right of the other. Tekwando is therefore a “person concerned”. It is qualified to bring the statutory application against EduBit's ‘Aunty’ mark.

Always put your registered mark to use, otherwise they risk being expunged and may end up in the hands of your competitor.

Contact an IP lawyer or law firm for professional guidance and legal assistance.

IP ABC

Best wishes


Follow-up questions, if any, are welcomed.


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