Certificación

Graphic representation is a representation that is bureaucratic in nature, there was discuss of being able to register colours, sounds and in addition shapes, smells and fragrances.

Asides the condition of capable of distinguishing then it must be capable of being

represented graphically. A limiting factor determining whether a sign is capable of being represented graphically is the requirement for a representation of the mark to be contained in the application to register a trademark, another one is the avert of marks in the

trademark journal which by the trademark Rules 2001 r 71 must contain a representation of the mark and the application form TM 3 has a square box (8cm x 8cm in which the

representation must be placed.

In case C-273/00 Sieckmann v. Deutsches Patent -und Markenamt (Supra), here the applicant had attempted to register the smell of cinnamon. The ECJ declared that in principle a smell could be a trademark.

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a. Colour Marks

In colour as marks it is important to fist include the colour(s) either as a sample or by means of an image of the goods to which the colour is applied. And secondly to use a well known references as a system for colours. Note that in applying to register as a trademark, a single colour or a colour combination in the abstract will not be easy. In case C-104/01 Libertel Groep BV v. Benelux - Merkenbureau (2003) ECR 1-3793, here an application was made to register the single colour orange in the field of telecommunication and

representation was submitted in the form of a rectangle of colour with no other indication of the colour such as a reference to a colour coding system and the court held that a single colour, not spatially Limited, may be acceptable if an internationally recognised colour code is used but simply reproaching the colour on paper does not satisfy the requirement of being capable of graphical representation.

Note that in the Nigerian context, under the Trademark Act LFN 1990 s16 states that A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.

b. Sound Marks

It is important to note that the use of conventional musical notation is appropriate for representing music as trademark. See the direct Line Insurance Plc telephone jingle (UK registration No 2030045, 2127794 and 2127799).

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Note that in the future, it may become acceptable to file a sound mark in digital form that is MP3 file, so that it can be played by accessing the file by computer.

c. Olfactory marks

The registration of smells, odours and fragrances has met with very little success. How does one represents a smell graphically in a way which is clear, precise, easily accessible, intelligible, durable and objective. Note that despite it short comings there are still some success of olfactory marks registration. The first of which is the trademark is a floral fragrance/smell reminiscent of roses applied by tyres with registration No 2001416.

It is imperative to note that applicant hoping to register olfactory marks soon realised that a written description on its own may not be sufficient to fulfill the requirement of graphical representation and they demonstrated some not inconsiderable ingenuity. See John Lewis of Hungerford Ltd's Trademark Application (2001) RPC 575.

d. Shape marks

This is one of the straight graphical representation of a shape mark by means of a drawing or set of drawings from different angels. In C-299/99 Koninklyke Philips Electronics NV v.

Remington Consumer Product Ltd (supra), where the court of justice has made it clear that shape marks are to be treated no differently to other types of signs for the purposes of fulfilling the requirement under Art 2.

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However, in Triomed (Propreitary) Ltd v. Beecham Group Plc ( 2001) FSR 583, the South African High court revoked a shape mark used for pharmaceuticals. It is important to note finally that another hurdle that stands in the way of registering shape marks results from the basic requirement that the mark must be capable of distinguishing goods or services of one undertaking from those of others. It has to operate as a trademark - a badge of origin.

3.3 Registering

This part of the unit will be comparing the registration and registry procedure in Nigeria and the UK. Under s32 of the Trademark 1994, an application to register a trademark requires the submission of the following items and s18 of the Trademark Act LFN 1990.

1. A request for Registration

2. The name and address of the applicant

3. A statement of goods and services in relation to which is sought to register the trademark

4. A representation of the trademark

5. A statement that the trademark is being used, by the applicant or with his consent, in relation to those goods or services or he has bonafide intention of so using it.

6. The prescribed fee.

Note that the filling date will be the date when all necessary documents have been furnished to the registrar, while s35 provides for priority from earlier fillings from Paris Convention countries for up to six months.

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Note that in the absences of any ground to challenge an application on this basis, it remains possible that any other person claiming to have the right to use it may oppose the

application on the basis of the relative grounds or on the ground that the application was made in bad faith. In Ball v. Eden Project Ltd (2002) FSR 686, in an infringement action, it was held that registration of a company name by a director of that company without that company's consent for the apparent purpose of giving the director a personal benefit was a breach of the director's fiduciary duty. It is however imperative to read more on the

statutory provisions available for registration of trademark. Read more on s37-41 Trademark Act 1990 and s17-22 of the Trademark Act LFN 1990.

3.4 Grounds for Refusal of Trademark

There are two main categories of grounds available for refusal of trademark applications.