Business brief 2018: Nigeria

23-05-2018

John Onyido and Oluwasolape Owoyemi

Patents

How are patent rights registered or secured in Nigeria?

Under the Nigeria Patents and Designs Act, an invention will be deemed patentable only if it is new, results from inventive activity and is capable of industrial application, or if it constitutes an improvement upon a patented invention.

In Nigeria, there is a centralised system of registration for patents at the Patents and Designs Registry by filling appropriate forms accompanied by a patent application, a specification (including a claim or claims), plans or drawings if any, a declaration and an authorisation of agent.

What are the costs of obtaining and defending a patent?

The average cost of obtaining a patent is between $606 and $724. Official fees for a single non-convention (PCT and Paris Convention) country patent: $41.66, convention country patent application: $69.44. 

Average professional fees: $565 to $655. Making amendments to submitted documentation ranges between $261 and $397, inclusive of professional fees and disbursements.

It would cost approximately $25,000 to defend an action for patent invalidation on a client’s behalf, depending on the complexity of the lawsuit, exclusive of costs and expenses.

Is there anything unusual about Nigeria’s patent law that companies should be aware of, and what are the most common mistakes businesses make?

In Nigeria, the right to a patent is vested in the statutory inventor who first files the application for grant of patent. Nigeria does not have an investigation or examination procedure for inventions as the registry lacks the requisite technical skill and funding to carry out detailed examination.
Patents are granted at the risk of the patentee without any guarantee as to their validity. Consequently, the substantial validity of a patent can be challenged at any time after its issuance in a court of law by an interested party.

"Foreign companies selling their products through local distributors/subsidiaries in Nigeria often neglect to record a registered user agreement or licence at the registry."

Trademarks

How are trademarks registered or secured and what protection do they grant?

Once it is ascertained that a mark is registrable, a search should be conducted at the Registry to confirm the availability of the mark. An application may be made without conducting a search but this stands the risk of being refused if it is discovered to be in conflict with an existing mark. The requisite statutory documents for an application include:

  • The name of the mark or specimen of the mark (in the case of a logo or device);
  • The full name and address of the applicant;
  • Indication of the product class(es); and
  • A power of attorney. No certification or legalisation is required.

These documents are forwarded and addressed to the Registrar of Trademarks, with an indication whether registration is sought under part A or part B of the register. An acceptance letter will normally follow after an initial examination for possible conflicts.

The application is thereafter published in the Trade Marks Journal at the discretion of the Trade Marks Registry. If no opposition is filed challenging the application for registration within the statutory period of two months, an application for issuance of a certificate of registration can be made.

Registration of a trademark gives the owner/proprietor exclusive right to the use of that trademark, and the registrant can institute proceedings to restrain or recover damages for infringement.

What are the costs of registering and defending a trademark?

The average cost of registering a trademark is $900. Official fees for a single trademark registration in one class: $70. Average professional fees: $605. Disbursements: $125 and $100 for procurement of registration certificate. The cost of defending a trademark application where an objection to the registration is raised through opposition proceedings is $1,322, exclusive of related disbursements.

Is there anything unusual in Nigerian trademark law that foreign companies should be aware of and what are the most common mistakes businesses make?

Nigeria currently does not belong to any regional registration regime such as the Organisation Africaine de la Propriété Intellectuelle (OAPI) and the African Regional Intellectual Property Organization (ARIPO), or to the Madrid Trademark registration system. Also, foreign companies selling their products through local distributors/subsidiaries in Nigeria often neglect to record a registered user agreement or licence at the registry. Failure to do this means that use of the trademark by the local representative will not transfer to the proprietor and could expose such mark(s) to removal proceedings for non-use.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Nigeria has increasingly become a target destination for counterfeit and pirated products. The government continues to lose billions in revenue due to the production and or importation of counterfeit goods. Counterfeiting also continues to expose citizens to dangerous and damaging products which are potentially harmful and impair consumer confidence in legitimate brands. The pharmaceutical and entertainment sectors face the biggest threat in Nigeria.

What are the best strategies for dealing with the problem?

Raids by government agencies and customs are the most effective means of recovering and impounding counterfeit items, supplemented by infringement/passing off actions. Cease and desist letters can sometimes produce positive outcomes.

Copyright

What are the key challenges to copyright owners in your jurisdiction?

Apart from piracy, copyright owners do not fully appreciate the extent of their exclusive rights under Nigerian copyright laws and the need to secure legal assistance. Owners are easily exploited and deprived of what is lawfully theirs.

How should people ensure they are protected against copyright infringement?

It is advised that they register their material with the Nigerian Copyright Commission’s (NCC) online database. Although this is not compulsory, it provides a convenient tool for proving ownership, date of creation and other ancillary information relating to copyrighted material.

Copyright owners/authors must read agreements carefully, to avoid unintentional transfer of rights. It is also important for copyright owners to retain the services of a lawyer and to conduct constant market checks to quickly identify infringing conduct and take the necessary legal steps to deter/discourage the distribution of infringing materials.

What is the best way to deal with infringement?

Instigate regulatory action by the NCC or institute a civil and/or criminal action simultaneously against the infringer in court. An injunction may also be sought to seize, detain and preserve any such infringing items or block their manufacture.

The copyright owner will also have the opportunity to recover damages, and get permanent injunctive relief and reparatory awards.

Have there been any other developments? 

In December 2017, the Federal Executive Council approved the Copyright Bill for the amendment of the Copyright Act, which will provide stiffer penalties for contravention of the Act and other related matters. There is also before the Nigerian House of Assembly an Intellectual Property Commission of Nigeria Bill and an Industrial Property Commission of Nigeria Bill.

Several ongoing lawsuits may clearly define the legal scope of rights and responsibilities of Collecting Societies in Nigeria.

 

John Onyido is the partner in charge of SPA Ajibade’s IP and technology department. His experience spans 26 years and across various jurisdictions. Onyido is qualified to practise law in the US, including the state of New York and the US Supreme Court. He can be contacted at: jonyido@spaajibade.com

Oluwasolape Owoyemi is an associate at SPA Ajibade, where she provides general advisory services on a broad range of IP issues with a åparticular focus on patents, copyright, trademarks and design rights in different jurisdictions, including Ghana, OAPI and Nigeria. She can be contacted at: oowoyemi@spaajibade.com

SPA Ajibade, Business Brief, Nigeria, patent, trademark, copyright, John Onyido, Oluwasolape Owoyemi

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