Under the IT policy, Nigeria operates a close domain system under the dot-ng registration title.

Any applicant desirous of registering a domain name is required to file an indemnity bond absolving the registering office from “all cost, fees, expenses that may arise from litigation involving trademark, trade name, service mark, and any other name infringements, or other reason”.

• The offices of Standards Organisation of Nigeria (SON) and National Agency for Food and Drug Administration and Control (NAFDAC) are both in charge of regulating the importation/exportation of non-consumables and consumable products into and from Nigeria respectively.
  

  STANDARDS ORGANISATION OF NIGERIA (SON)

  SON as Standards Organisation of Nigeria is generally known was established in 1971 under the enabling Act No. 56 and after three amendments currently operates as Cap 412 Laws of the Federation of Nigeria 1090. The organisation’s governing body is known as the Nigerian Standards Council and they are responsible for formulating the policy thrust under which the organisation is administered.

  The aims and objective of SON includes preparation of standards relating to products, measurements, materials and processes; certification of industrial products, amongst others. Under the later aim, a Nigerian Industrial Standards (NIS) was approved to formulate the relevant criteria to ensure that a material, product or procedure is fit for the purpose for which is intended. The Industrial Standard is divided into six categories:

  • glossaries or definitions of terminology
  • dimensional standards
  • performance standards
  • standard methods of test
  • codes of practice, and
  • measurement standards

The organisation operates a certification Scheme whereby manufacturers whose products meet the requirement of NIS are issued with permits to use the Certification Mark or the Nigerian “Mark of quality” as issued by SON.

Presently, SON conducts food and chemistry laboratory test, engineering (mechanical, civil and electrical) test, textile and leather test and as the custodian of the National Primary Standards of Measurement in the country, offers instrument calibration facilities to industries, research institutions and government agencies.

In the light of the fact that SON is authorised to conduct periodic preventive inspections in factories and markets to forestall the sale of sub-standard products, often, they are a very effective tool in combating infringements and counterfeiting.

Criminal Liability

Under the provisions of Sections 14 and 15 of the enabling Act, individuals and corporate bodies are criminally liable if the fail to comply with or undertake certain actions as required under the Act.

NATIONAL AGENCY FOR FOOD AND DRUG ADMINISTRATION AND CONTROL (NAFDAC).

NAFDAC deals primarily with food, cosmetics, medical devices and bottled water. It guideline provides that:

No food, cosmetics, medical devices or bottled water shall be manufactured, imported, exported, advertised, sold or distributed unless it has been registered in accordance with the provisions of the enabling law establishing that office

Quite apart from the above, labelling of products is also monitored by NAFDAC. The following minimum requirements must appear on the label:

• Name of product- brand name or common name in bold letters
• Full location and address of the manufacturer
• Batch number, date of manufacture and best before date
• Net content of essential ingredients in metric weight units in case of solid, semi-solid and aerosols and metric volume in case of liquids
• In case of food, ingredients must be listed by their common names in order of their predominance by weight unless the food is standardized, in which case the label must include only those ingredients which the standard makes optional
• Food additives and colours must be declared on the label.

There are further provisions for labelling of food for special dietary uses.

An applicant for the registration of any product with NAFDAC is required to furnish that office with evidence of an application for the registration of a trade mark bearing the name of the product; in this case, the minimum document required is a notification of acceptance of a trade mark application issued by the Registrar of Trade Marks. A successful applicant for a NAFDAC registration will be issued with a certificate of registration with a validity period of five years. Registration of a product does not automatically confer advertising permit. A separate application and subsequent approval by the Agency shall be required in the product is to be advertised.

NAFDAC is empowered to undertakes periodic inspection of markets, shops and warehouses and if need be they are also empowered to seize and destroy offending products and seal-up premises of offending persons or bodies.

“An Act to make provisions for the definition, protection, transfer, infringement of and remedy and penalty thereof of the copyright in literary works, musical works, artistic works, cinematograph films, sound recordings, broadcast, and other ancillary matters”

has been subjected to several amendments; the first being in December of 1992 when the Act (Decree as it then was) was amended to include provisions empowering the Council to grant compulsory licenses in accordance with the provisions of the Fourth Schedule to the Act, (See section 30A) and also the inclusion of provisions for the appointment of copyright inspectors (See Section 32A)

Under the Appointment of Copyright Inspectors Notice of 1st January 1997, further amendments to the Act were made wherein provisions were made for the appointment of Design Layout Copyright Inspectors. Further, on the 10th May 1999, the name of the administering agency was changed from Nigeria Copyright Council to Nigeria Copyright Commission. On the substantive aspect of the law, a new section 4A was introduced which provides thus:

4A.
(1) Copyright shall be conferred by this section on every work if –
(a) on the date of its first publication at least one of the authors is-

• a citizen of or domiciled in, or
• a body corporate established by or under the laws of, a Country that is a party to an obligation in a treaty or other international agreement to which Nigeria is a party;

(b) the work is first published –

• in a country which is a party to an obligation in a treaty or other international agreement to which Nigeria is party,
• by the United Nations or any of its specialised agencies, or
• by the Organisation of Unity, or
• by the Economic Community .

(2) Where the question arises as to whether a country is a party to an obligation in a treaty or other international agreement to which Nigeria is also a party, a certificate from the Commission to that effect shall be conclusive proof of that fact”.

Also provisions on the limitation of the right of action, anti-piracy measures, criminal liability in respect of infringement of folklore, expansion of the powers of copyright inspectors and so many others.

Works eligible for copyright

Section 1 of the Copyright Act provides that the following shall be eligible for copyright:

• literary works;
• musical works;
• artistic works;
• cinematograph works;
• sound recording; and
• broadcasts.

Under sub-section (2) of the Act, a literary, musical, or artistic work shall not be eligible for copyright unless- (a) sufficient effort has been expended on making the work to give it an original character; (b) the work has been fixed in any definite medium of expression now known or later to be developed, from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device. Also artistic work shall not be eligible for copyright, if at the time when the work is made, it is intended by the author to be used as a model or pattern to be multiplied by any industrial process. Interestingly, the Copyright Act also provides that a work shall not be ineligible for copyright by reason only that the making of the work or the doing of any act in relation to the work involved an infringement of copyright in some other work.

Though the Act does not provide for the registration of copyright, in practice the Commission has a “deposit system” which for all intent should fairly appropriate the commencement date of any copyright in dispute.

Terms of copyright:

Jurisdiction

The Federal High Court as a court of first instance has exclusive jurisdiction for the trial of offences or disputes arising from copyright matters.

Nigeria is a party to the Madrid Agreement on International Registration of Trademarks and the Nice Agreement on the International Classification of Goods and Services. The laws governing trademark administration and the enforcement of it accruing rights are contained in Cap 436 of the Trade Marks Act (TMA) 1965, and Trade Marks Regulations of 1967 (both provisions have been revised in the Laws of the Federation of Nigeria 1990.

The criminal aspects of some of the issues relating to the breach of trademark rights are codified in the Merchandise Marks Act, Cap.223 Laws of the Federation of Nigeria. Civil issues relating to the beach of trade mark rights are exclusively handled by superior courts . Previously, the general opinion was that the provisions of Section 7(1) c) (ii) of the Federal High Court Act, Cap. 134 Laws of the Federation of Nigeria, 1990 conferred exclusive jurisdiction on the Federal High Court to entertain actions in respect of civil matters “arising from” any enactment relating to trade marks, however, the decisions of the Supreme Court in PATKUM INDUSTRIES LTD. V. NIGER SHOES MANUFACTURE LTD (1985) 5 NWLR (pt. 93) 138 and AYMAN ENTERPRISES LIMITED V. AKUMA INDUSTRIES LIMITED (SC 116/199) holds the view that where any passing off action that does not arise from a registered trademark (infringement of a Federal enactment) is a common law right of which the State high Courts and not the Federal High Court has jurisdiction to entertain.

Under Section 66 of the TMA, a mark is defined as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof. Any person claiming to be the proprietor of a trade mark used or proposed to be used can apply for the registration of a trademark. Use is not a requirement for registration of a trade mark , provided that a registered trademark may be taken off the register in respect of any of the goods in respect of which it is registered on the grounds that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has in fact been no bona fide use of the trademark in relation to those goods by any proprietor thereof for the time being up to the date one month before the date of the application, or

That up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trademark was a registered trademark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being.

Procedure and requirements for registration:

An application can be filed by the applicant or his local agent. Where the applicant chooses to file the application directly, he must provide an address for service with. It is advisable that searches be conducted to determine the availability of a trade mark before any application for registration is made. The application form must contain the following details:

a. Name and address of the applicant;

b. List of goods for which the application is sought;

c. Nature of business of the applicant;

d. Representations of the mark sought to be registered;

e. An Authorisation of Agent (Power of Attorney) signed by the applicant and where the applicant is a body corporate, by an officer duly authorised to do so. No legalisation or notarisation of this document is required.

A representation of the proposed trade mark must be affixed to the form accompanied with 20 additional representations of the trademark, and the official filing fee. An application containing a word or words other than in English language shall be endorsed with an exact translation thereof. Convention application(s) must be filed within six months of the date of the home application.

On receiving the application, the Registrar will issue an acknowledgement form to the applicant. The acknowledgement form will contain the trade mark application number (which will be changed when the application is registered) and the date the application was filed. After issuing the acknowledgement form, the application will be subjected to an examination strictly as to it distinctiveness.

Thereafter, the Examiner may object to the registration of the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any as he may deem fit. If the Examiner objects, he shall inform the applicant of his objection in writing and unless within two months from the date of receipt of the Examiner’s letter, the applicant applies for a hearing or makes a considered reply in writing to those objections, he shall be deemed to have withdrawn or abandoned his application. In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to appeal to the court.

If the Examiner does not object to the application, he will accept the mark and issue the applicant with a Notification of Acceptance. Thereafter, Registrar shall cause notice of the application as accepted to be published in the Trade Marks Journal. (In some instances the Registrar shall cause notice of the application for Registration of a trade mark to be published in the Trade Marks Journal before acceptance).

Any person may within two months from the date of publication of the application in the Trade Marks Journal give notice to the Registrar of opposition to the registration. Numerous case law decisions have held that on a strict `interpretation of Section 20(3) of the Trade Marks Act, the Registrar has no discretion to extend the period within which to file either the Notice of opposition or a reply by way of a Counter- Statement.

If no objection to the registration is recorded within the specified time, the Registrar is authorised to issue the Certificate of Registration. The initial registration is valid for 7 years and the encircled letter ® may be used to indicate a registered trademark.

Trade mark renewal:

The Trade Marks Act provides that on application made in the prescribed manner and within the prescribed period, the Registrar shall renew the registration of a trademark for a period of fourteen years from the date of expiration of the original registration or of the last renewal of registration. Late renewal is permitted upon payment of a penalty fee.

If a new Agent other than the Agent that applied for registration is being instructed to renew a mark, an Authorisation of Agent (Power of Attorney) will be required to enable the new Agent process the application. In all cases, the authorisation requires no legalisation or notarisation.

Trade mark assignment:

A registered trademark is assignable and transmissible either in connection with the goodwill of a business or not. It is also assignable and transmissible in respect either of all the goods in respect of which it is registered or was registered, as the case may be, or of some of those goods. Similarly, an unregistered trademark is assignable and transmissible if at the time of the transmission, it is used in the same business as a registered trademark; and is assigned or transmitted at the same time and to the same person as that registered trademark.

Unless an assignment is recorded at the Trademark Registry, a transferees` statutory right to commence an action for infringement will not be recognised by the courts. However, the common law right to institute a passing-off action avails the transferee. An application for assignment must be accompanied with the following:

A joint request to the Registrar by the registered proprietor and assignee to register the assignee as subsequent proprietor of the trademark upon the same devolution of title (both the registered proprietor and the assignee must sign the request and all information pertaining to the transaction must be provided in detail in order to avoid delay in the processing of the application);

An Authorisation of Agent (power of attorney), one each from the registered proprietor and the assignee. No legalization or notarisation of this document is required;

A Deed of Assignment- which must be assessed and duly stamped at the Federal Board of Inland Revenue by the local Agent;

A statement of case setting forth the full particulars of the facts upon which the Assignee’s claim to the proprietorship of the trade mark is based, and showing that the trade mark has been assigned to him, this document must be signed by the Assignee or its representative; and

The prescribed fee

Trade Mark Forms

• Authorisation of Agent (Power of Attorney)
• Statement of Case
• Trade Mark Form 17
• Trade Mark Form 40
• Trade Mark Form 47

Introduction

The Patents and Designs Act of 1971 Cap. 344 is the substantive law governing affairs of patents , while the Patent, while the Patents Rules regulates the procedures adopted at the Patent Registry. Under section 26 Patent and Designs Act, the Jurisdiction to hear and dispose of legal proceedings under the PDA is vested in the Federal High Court and the section also provides that the provisions of the Trade Marks Act applicable to legal proceedings under the Act shall apply with necessary modifications to legal proceedings under the PDA.

Requirement for registration:

Every patent application made shall contain the following:

a petition or request for a patent signed by the applicant or his agent and containing the applicant’s full name and address;

a specification, including a claim or claims in duplicate;

plans and drawings, if any, in duplicate;

where appropriate, a declaration signed by the true inventor requesting that he be mentioned as such in the patent and giving his name and address;

a signed power of attorney or authorisation of agent if the application is made by an agent;

an address for service if the applicant’s address is outside Nigeria; and

the prescribed fee.

Foreign Priority:

Where the applicant seeks to avail himself of a foreign priority in respect of an earlier application made in a country outside Nigeria, he shall append to his application a written declaration showing the date and number of the earlier application, the country in which the earlier application was made, and the name of the applicant who made the earlier application. The applicant will be expected to furnish the Registrar, not more than three months after the making of the application in the initial country with a copy of the earlier application certified correct by the Industrial Property Office (or its equivalent) in the country where the earlier application was made. The principle of Restitutio in intergrum does not apply with respect to priority term in the case of a convention application.

Claims and examination:

A patent application shall relate to only one invention, but may include in connection with that invention, claims for any number of products or for any number of manufacturing processes for those products, and for any number of applications of those products. It may also include claims for any number of processes, and for the means of working those processes, for the resulting product or products and for the application of those products. Under the provisions of the PDA, the Registrar is only permitted to examine every patent application as to its conformity with certain sections of the Act, such examination being in essence formal in nature. There is no provision in the Act on the substantive examination of a patent application.

Duration and lapse of patent:

Every patent shall lapse at the end of the twentieth year from the date of the filing of the relevant patent application. A patent shall also lapse if the prescribed annual fees are not duly paid in respect of it, provided that a grace period of six (6) months shall be allowed for the payment of the fees; and if the fees and the prescribed surcharge are paid within that period, the patent shall continue as if the fees had been duly paid.

Patent Forms

• Patent Assignment of Invention
• Patent Assignment of Priority Right
• Patent Authorisation of Agent (Power of Attorney)