Jun 25, 2019

Infusion Lawyers: Can a registered trademark be lost?


Dear IP ABC

My name is Theophilus. I have a friend Oluwanifemi whose brand name Glowbal Makeovers has become quite a household name in my state, Ogun State. Oluwanifemi has customers from within and outside the state capital where her business is based. Recently, she was contacted by a competitor Marian Makeovers who wanted to purchase her brand name ‘Glowbal Makeovers’ for N1 million. Oluwanifemi turned down the offer. During negotiations, Marian Makeovers mentioned that Oluwanifemi might lose the trademark ‘Glowbal Makeovers’ anyway, thus making it a good call for her to sell the brand without delay. Now, Oluwanifemi is worried. She is wondering how true Marian Makeovers’ claim is. Can a registered trademark be lost?

Answer
Dear Theophilus
The answer is YES, Oluwanifemi may lose her registered trademark ‘Glowbal Makeovers’ but only on certain grounds, including abandonment or non-use, genericide, or deception, fraud, or misrepresentation. In the absence of these grounds, the answer is NO.
Under trademark law, a trademark owner may lose his or her registered trademark after it has been taken off the trademark register in respect of any of the goods or services for which it was registered.
 
The first and most common ground by which a trademark can be lost is abandonment or non-use.
A proprietor may lose his or her registered trademark due to abandonment or non-use.
Under section 31 of Nigeria’s Trade Marks Act, a registered trademark may be taken off the register in respect of any of the goods or services for which it is registered. This removal may be triggered by any person through an application to the Federal High Court on either of two grounds:
  1. That the trade mark was registered without any bona fide or genuine intention on the part of the applicant to use the mark in relation to goods or services for which the trade mark was registered and there has in fact been no bona fide use of the trademark in relation to those goods or services by such proprietor from inception up to one month before the date of application to remove the mark from the register; or
  2. That up to the date which is one month before the date of the application a continuous period of five years or longer elapsed during which the trademark was a registered trade mark and during which there was no bona fide use of the trade mark in relation to those goods or services by any proprietor for the time being.
Therefore, as long as Oluwanifemi’s Glowbal Makeovers is still in business, there is no way it can be removed from the register.
By the way,  non-renewal of a registered trademark is a way for one to lose his or her trademark.

What does the phrase ‘bona fide use’ of a trademark really mean?
Bona fide use’ means genuine use. This genuine use is determined by commercial standards. Use for illegitimate or undue purposes⁠—such as for example to prevent another proprietor from registering a trademark which is distinctively associated with that proprietor⁠—is not bona fide use.
This is why a registered trademark will not be removed from the register for non-use when such non-use is due to special circumstances in the trade. But if non-use is a result of any bogus, fake, or insincere intention of the proprietor, the registered trademark would be due for removal.
Since Oluwanifemi is genuinely using ‘Glowbal Makeovers’ as a trademark of her thriving makeover business, Marian Makeovers’ claim that Oluwanifemi would lose her trademark sooner or later is untenable.

A second major ground by which a trademark can be lost is when it becomes a generic mark and this happens in two ways.
If a trademark becomes generic, a court of law—upon application by any person—may decide that the trademark has lost its inherent distinctiveness or it was not distinctive in the first place.
First, a word is inherently and originally generic when the word merely describes a class of goods or services, thus rendering it ineligible for trademark protection. For example, words such as ‘sauna, ‘smartphone’, or ‘pen’ are generic terms. As far as the classes they describe are concerned, they are ineligible for trademark protection of goods or services in those classes. ‘Sauna’, ‘smartphone’, or ‘pen’ may be used to distinctively identity goods or services that do not belong to the classes they describe. Good examples of this are ‘Apple’ and ‘Orange’, distinctively known as technology companies. How does this work? Neither Apple nor Orange is in fruit business, the class their names describe.  
Second, an originally distinctive word registered as a trademark can lose its distinctiveness, thus becoming generic and consequently losing trademark protection. This happens if consumers or the members of the public begin to use the word to describe the goods or service. Common examples such generic words include Aspirin, Escalator, etc. Recently, ‘Google’ was at the brink of becoming generic. When an originally distinctive trademark loses its distinctiveness, the trademark dies. It dies because with distinctiveness lost, consumers or members of the public are no longer able to identify the source of the goods or services. Now generic, the trademark becomes a term that merely describes a class of goods or services.
Though Oluwanifemi’s ‘Glowbal Makeovers’ has become well known in the market, it does not become generic until consumers or members of the public begin to use ‘Glowbal Makeovers’ to describe the goods or services, rather than to identify it or distinguish it from other makeover goods or services. Has ‘Glowbal Makeovers’ attained this level. It doesn’t seem so.
By the way, when a trademark becomes generic, the trademark proprietor does not necessarily lose the right to his or her brand name. Rather, the proprietor loses the right to sue others for using the brand name. In other words, he or she no longer enjoy exclusivity.


A third ground by which a trademark can be lost is when there is deception, fraud, or misrepresentation

When a trademark is found to be deceptive—i.e. likely to deceive or cause confusion—it is a strong basis for removal from the trademark register.
Also, when a trademark proprietor commits fraud or misrepresents material or relevant facts to the registry at the point of applying for the registration of the trademark, the registered trademark may be removed.
Since neither deception nor fraud is the case with Glowbal Makeovers, removal of the trademark from the register is most unlikely.

Wrapping Up
Despite trademark registration, ‘Glowbal Makeover’ trademark may be lost (i) if it has not been used for a certain period of time; (ii) if it has become generic; or (iii) if it involves deception, fraud, or misrepresentation. To avoid the tragedy of losing a trademark or watching a trademark die especially after investing so much to build the brand, brand owners should ensure that they consult an IP lawyer or law firm for legal advice on steps to take. Oluwanifemi should make that call.
Best wishes
IP ABC
www.infusionlawyers.com 
Reactions: