It is not uncommon to come across cases where there is conflict between an incorporated company’s name and a registered trade mark. There are also cases where a foreign trade mark owner discovers that an incorporated company in Nigeria uses its registered trade mark as its company’s name. This article examines the legal issues involved and the administrative and regulatory remedy to resolving the conflict.
The Corporate Affairs Commission (CAC) is the agency of the Federal Government of Nigeria vested with the power of registering companies. The activities of the CAC is largely governed by Companies and Allied Matters Act, Cap C20, Laws of the Federation of Nigeria, 2004 (CAMA).
Section 30 of CAMA generally provides for names that are prohibited and restricted in registering a company. Sub-section (d) provides thus: “No company shall be registered under the Act by a name which in the opinion of the commission would violate any existing trade mark or business name registered in Nigeria unless the consent of the owner of the trade mark or business name has been obtained”.
Further to the above, Section 31 (4) CAMA provides that “Nothing in the Act shall preclude the Commission from requiring the company to change its name if it is discovered that such a name conflicts with an existing trade mark or business name registered in Nigeria or prior to the registration of the company and the consent of the owner of the trade mark or the business name was not obtained”.
The effect of the above-cited provisions of CAMA is that Nigeria law prohibits the registration of a company with a name which conflicts with an existing trade mark registered in Nigeria without the consent of the owner. CAMA also makes provisions for the cancellation or change of such conflicting name.
However, a critical examination of the law reveals that for a party to successfully object to the registration of a company’s name under these provisions, the following conditions must be satisfied:
- The applicant must have an existing trade mark that is duly registered in Nigeria;
- That applicant’s trade mark must have been registered in Nigeria prior to the registration of the offending company;
- The offending company’s name registration conflicts with the applicant’s pre-existing registered trade mark;
- The consent of the Applicant was not obtained prior to the registration of the offending company’s name.
In the event of such conflict, the trade mark owner is required to make a complaint to CAC and provide documents to prove the conditions mentioned above. An investigation will be conducted by CAC to confirm the allegations by the trade mark owner. Where the allegations are verified and the trademark owner has provided sufficient evidence to show that the trade mark was registered prior to the company incorporation, CAC shall direct the defaulting company to change its name.
Despite the provisions of CAMA, in practice CAC does not conduct a search on the trademark’s registry data base during the registration of new companies to ensure that the name does not conflict with an existing registered trade mark. A major question which is always raised by such defaulting company is – Why should the defaulting company be made to change its name since the company’s name was initially approved by CAC after conducting a search on its database? The decision for the defaulting company to change its name is usually difficult because they may have been trading for some years with the said name.
The above questions are key and are very important however the provisions of CAMA are very clear, nothing can preclude CAC from directing the defaulting company to change its name even where the name was initially approved by CAC. The Nigerian courts have also upheld the enforcement right of CAC with regards to directing a company to change its name, notwithstanding the fact that it had previously searched and approved the name.
A major issue which arises in practice is the enforcement right of CAC in mandating defaulting companies to comply with the directive to change its name. Where CAC directs a defaulting company to change its name, it usually bars the activities of the defaulting company within CAC by placing a caveat on the company’s file and restricting all post incorporation filings by the defaulting company.
There is need for a synergy between CAC and the Trademark, Patent and Design Registry. In Nigeria, there is no unified database for regulatory alliance, among relevant government agencies and departments charged with the registration of business, commercial transactions and IPRs. To ensure efficient enforcement of the provisions of Section 30 of CAMA, there should be a mechanism for data synergy between the Corporate Affairs Commission (“CAC”) and the Trade Marks Registry.
 Section 31(4)
 Mr. Price Group Limited & Anor vs. Mr. Price West Africa Limited & Anor (Suit No FHC/L/CS/1044/2012)
The opinions in the articles are for general information purposes only and do not form a legal relationship or be taken as legal advice. To explore legal advice, please consult your solicitor or feel free to get in touch with us directly.