EXTENSION OF TIME FOR FILING NOTICES OF OPPOSITION IN THE LIGHT OF THE LOCKDOWN: THE POSITION OF THE LAW

Karekpen Limited (the “Client”) instructed TNP, an accredited Trade Marks, Patent and Designs Agent to file its trade mark at the Trade Marks Registry (the “Registry”). TNP successfully filed the Client’s trade mark and a Certificate of Registration evidencing the registration was issued in favour of the Client. Subsequently, Rex Limited, (not the real name) initiated the process of filing an identical trade mark. TNP, quickly informed the Client that –

  • an identical trade mark was published in the most recent Trade Mark Journal[1];
  • for the Client to successfully challenge the registration of the identical trade mark, the Client is required to file a Notice of Opposition, and must do so within the statutory period.

The Client has instructed TNP to file the Notice of Opposition against the identical trade mark. However, as a result of the outbreak of the COVID-19 pandemic, governments across the world adopted several measures to control the spread of the pandemic. On its part, the Federal Government of Nigeria (FGN) effective from 29th March 2020, issued a series of directives imposing a lockdown of the Federal Capital Territory, Lagos and Ogun States lasting five (5) weeks.

The Registry like other parastatals and businesses not exempted from the lockdown, complied with the directive, rendering it impossible for the Client to comply with the statutory period to file any Notice of Opposition by the deadline date of 28th April 2020.

Recognizing the challenge posed by the unusual situation, the Registrar of Trade Marks (the “Registrar”), vide a Notice posted on the Registry’s news board supposedly extended the time frame within which Notices of Opposition against published trade marks may be filed. The Notice inter-alia states that in computing the period for such filings or actions, the period of the lock down imposed by the FGN will be excluded until the lockdown is lifted by the FGN. The “Notice” issued by the Registrar has become a subject matter of contention among IP Practitioners who have questioned its validity, we have shared the position of the law and our opinion below.

Extension of Time under the Trade Marks Law

Under Nigerian Trade Mark Laws, any person (the “Opponent”) may within two (2) months of the publication of a trade mark Journal, file a notice of opposition against a published trade mark indicating the basis for the opposition[2]. Thus, an Opponent must file its Notice of Opposition within the stipulated two (2) month period.

The Act empowers the Minister for Industry, Trade and Investment (the “Minister”) to make regulations extending the time limited by the Act for the performance of any act, whether generally or in particular cases and whether at the discretion of the Registrar or otherwise[3]. The power to allow the extension of the time for the performance of an action can only be:

(a) exercised by the Minister; and

(b) the Minister may exercise the power to allow an extension by a regulation which will only have effect once it is published in the Federal Gazette.

It important to note that while Regulation 57 of the Trade Marks Regulations (the “Regulation”) contemplates the grant of extension of time to a party in an opposition proceeding and permits the Registrar to grant any reasonable extension of time to any other party to take any subsequent step, this provision must be considered in tandem with the procedure for the grant of extension of time under the Act.

Furthermore, the Regulation provides that the grant of extension of time is only applicable where the Act does not expressly stipulate timelines for the performance of an act or in relation to the relevant provisions of the Regulation relating to assignment of trade marks. This is definitely not applicable in this instance.

In A.G of Federation v. A.G of Lagos State (2013) LPELR-20974(SC), the Supreme Court of Nigeria held that “in the interpretation of statutes, the constitution and like matters, words must be given their natural and ordinary meaning”. In this instance, granting an extension of time by a Notice does not constitute giving Section 45(g) of the Act a natural and ordinary meaning; to give Section 45(g) of the Act the natural and ordinary meaning, the extension of time for filing notices of opposition must be done by the Minister through a Regulation. It therefore means that any extension no matter how well intended will amount to a contravention of the Act.

Flowing from the above, the contention regarding the validity of the Notice issued by the Registrar is understandable.

Our opinion

  • Based on the above, it is our opinion that the Notice issued by the Registrar cannot extend the 28th April 2020 opposition deadline as it does not meet the prescribed statutory requirements. The question still remains, what was the purpose and intent of the Notice issued by the Registrar?

The Significance of the extension notice issued by the Registrar –

Opposing a trade mark application published in a journal in Nigeria entails –

  • making payments for the notice of opposition (this is a prerequisite for validly filing a notice of opposition); and
  • physically submitting the notices of opposition at the Registry.
  • It is our opinion that the Registrar, in ensuring that hardship was not occasioned by the lockdown, issued the Notice to allow the physical submission of notices to be done after the lockdown. This therefore means that any payment to oppose an application published in the 28th February 2020 online journal, made after 28th April 2020 deadline will be deemed to have been filed out of time.

The journal dated 28th February 2020 was for applications already filed on the Registry’s online platform. The online platform was not affected by the lockdown. As such, payment for all opposition applications could be made and had to been made on or before the deadline, 28th April 2020. This is non-extendable.

We expect that this will be a subject for litigation in the coming months.