Intellectual Properties

The importance of taxation in any economy cannot be overemphasized, and its effects remain significant. It helps greatly in the redistribution of income and gives the government funds that it can use to finance public services such as provision of adequate national security, public infrastructure, social security services, power, a network of roads and a host of other social amenities. The ability of the state to generate a substantial amount of revenue from taxes opens up opportunities for it to provide public services and improve the economy.
Intellectual Property rights provide Trademark, copyright, patent, design and other protection to the owner of the brand, the inventor of a machine, the author of a book, or the writer of music somehow usually ‘owns’ their work. From this ownership, certain consequences flow and it probably have been made aware of the fact that we cannot just copy or buy a copy of works without considering the rights of actual owner.
Gomez Corporate Consult LTD has built a strategic network of professionals who specializing in Trademark, Copyright, Patent and Design protection. Our team of experts is efficient with the procedures for registering a trademark with the relevant authorities and enforcement of one’s trademark. We also provide professional services to individual and corporate bodies in identifying counterfeit products, dispute resolution, enforcement of rights, resolving trade mark matters, franchising, due diligence, investigation to uncover unlawful practices e.g. unfair competition, breach etc.

PART A- TRADEMARK

A trademark is a symbol or a sign which differentiates the goods and services of one business from another one. You can register your trademark – a name, logo, slogan, domain name, shape, colour or sound with the Commercial Law department, Ministry of Trade and Investment in Nigeria. This can legally protect your trademark from use by a competitor. The trademark must be distinctive for the goods and services that you provide, not be deceptive, illegal or immoral and not be similar to existing trademarks.

A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

REQUIREMENTS FOR FILING NIGERIAN TRADE MARK APPLICATIONS

Applicant’s details

The full name(s), nationality and physical address of the applicant (to be advised to local Agent/Attorney).

The Trademark Information

The Representation must be clear and distinct. If to be filed online, soft copies are to be provided in jpeg format at a minimum of 1200 dpi. A representation is preferred to have the following dimensions: 120px by 100px (length by breath)

Goods

The full range of goods covered or proposed to be covered by the trade mark. Nigeria presently follows the International Classification of Goods. A separate application is filed for each classification of goods for which the trade mark is to be registered.

Power of Attorney/Authorization of Agent

A Power of Attorney simply signed, with full particulars of name(s), address (es) and nationality of the applicant(s). Full name(s) and capacity of the signatory when applicant is a firm/company.

PROCEDURE FOR REGISTRATION OF TRADE MARKS

The usual market practice is to instruct a local Attorney/Agent in Nigeria, who would file and process applications at the Nigerian Registry of Trade Marks, Patents, Designs and Copyright.

A Power of Attorney/Authorization of Agent Form would be completed in favor of such local Agent, as the enabling instrument to act for the principal/ Applicant. Thereafter, all official documents and forms would be submitted by the local Agent/Attorney. Until replaced or substituted by another local Agent, the local Agent remains responsible for processing registrations of the marks, defending Oppositions (if any), provides address for local service of documents, and maintains renewals of the marks.

A local Agent/Attorney may be replaced or substituted by executing another Power of Attorney/Authorization of Agent Form in favor of the succeeding Agent. NO formal notices are necessary and the Agent with the more recent Authorization is deemed to be the one with powers to act thenceforth.

After filing the application for trade mark registration, the Registrar issues an official acknowledgement reflecting the official number and filing date of the application. A preliminary search is conducted as to distinctiveness from existing and pending registrations. The Registrar examines the application for registrability taking into consideration possible conflicts with prior registered or pending marks and or inherent registrability of the mark. If the Registrar finds the trademark acceptable for registration, the applicant will be furnished with a letter/notice of acceptance.

Every trade mark application must be advertised in the Nigerian Trademark Journal, and is open to opposition for a period of two (2) months from the date of advertisement.

If no objections are received within the specified period or no objections are sustained, the Registrar will issue the applicant with a certificate of registration.

When issued, the Registration Certificate will reflect the date of initial filing as date of registration (i.e. date of filing acknowledgement).

Nigerian trade mark registrations have an initial validity of seven (7) years, and are thereafter indefinitely renewable for periods of fourteen (14) years. An application for renewal should be made not less than three (3) months from the due date.

A trademark may be registered either plainly (black and white) or in colour. However, where a trademark is registered in colour, the protection afforded the Mark is limited to the colour(s) registered. On the other hand, a plain (viz. black and white) registration affords protection to all colours of presentation of the trade mark.

Occasionally, the Registrar may request that for distinctiveness and acceptability for registration, word marks that are Common English words be registered in combination with devices or logos.

ELECTRONIC FILING IN NIGERIA

Trademarks can now be filed in Nigeria electronically through Local IP Agents. The Electronic filing was introduced to reduce the Hassles that come with Manual Processing of Applications.

The Electronic Filing Method is Convenient as you can file from the comfort of your location. Applicants will automatically get their Electronic acknowledgement notice on the same day of payment. Payments can now be made via Quickteller.com using Debit cards or at any Skye Bank Plc. in Nigeria. Applicants however must obtain Pre-generated Invoices obtainable through a Platform created for Local Agents in Nigeria.

One of the Benefits of Electronic filing is the Check Status module. You can track your applications online using your online application ID provided on your Acknowledgment letter.

Electronic Filing is encouraged as it is in line with Best practices around the world.

PART B. PATENT

A patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. It gives the owner the right to prevent others from making, using, importing or selling the invention without permission. Your invention must be new, have an inventive step that is not obvious to someone with knowledge and experience in the subject, be capable of being made or used in some kind of industry and not be, a scientific or mathematical discovery, theory or method, a literary, dramatic, musical or artistic work, a way of performing a mental act, playing a game or doing business, the presentation of information, or some computer programs, an animal or plant variety, a method of medical treatment or diagnosis, against public policy or morality.

The Patents and Designs Act of 1971 Cap. 344 is the substantive law governing affairs of patents in Nigeria, 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 in Nigeria shall contain 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 authorization of agent if the application is made by an agent; an address for service in Nigeria 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 Restitution in interregnum 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 in Nigeria shall lapse at the end of the (20th) 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.

PART C. INDUSTRIAL DESIGN

An Industrial Design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or colour. Industrial Designs are applied to a wide variety of products of industry and handicrafts such as technical and medical instruments, watches, jewellery, house-ware, electrical appliances, vehicles, architectural structures, textile designs, leisure goods and other luxury items. Industrial Designs make an article attractive and appealing, thereby adding to its commercial value and increasing its marketability. To be protected in Nigeria, an Industrial Design must appeal to the eye. This means that an Industrial Design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied.

PROTECTION OF INDUSTRIAL DESIGN:

In most countries, an Industrial Design must be registered in order to be protected under Industrial Design law. As a general rule, to be registrable, the design must be “new” or “original”. Different countries have varying definitions of such terms, as well as variations in the registration process itself. Generally, “new” means that no identical or very similar design is known to have existed before. Once a design is registered, a registration certificate is issued. Depending on the particular national law and the kind of design, an Industrial Design may also be protected as a work of art under copyright law. In which case registration is not required. In some countries, Industrial Design and copyright protection can exist concurrently.

In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other. In certain countries, an Industrial Design may also be protected against imitation under unfair competition law. The owner of a protected Industrial Design is granted the right to prevent unauthorized copying or imitation of the design by others. This includes the right of making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied. He may also license or authorize others to use the design on mutually agreed terms. The owner may also sell the right to the Industrial Design to someone else. The term of protection under Industrial Design laws is generally five years, with the possibility of further periods of renewal up to, in most cases, 15 years. Generally, Industrial Design protection is limited to the country in which protection is granted.

PROTECTING AN INDUSTRIAL DESIGN:

Helps to ensure a fair return on investment; Improves the competitiveness of a business against copying and imitating the design by competitors; Helps to increase the commercial value of a company, as successful Industrial Designs constitute business assets; Encourages creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts.

REQUIREMENTS FOR REGISTRATION OF DESINGS IN NIGERIA

Conduct availability search for design; Obtain application forms 1&2(textiles) 3&4(non- textiles). Include a statement of novelty specifying features of the design for which novelty is claimed; Submit specimen or representation including the graphic or photographic representation of design. Submit a power of attorney /authorization of agent: Certificate of design is issued after the application has been processed; Registration of industrial designs lasts for 15 years subject to renewal after every 5 years.

PART D- COPYRIGHT

Copyright is a significant specie of Intellectual Property which includes: literary works, musical works, artistic works, cinematographic Films, sound recordings, and broadcast. The Nigerian copyright practice is governed by the Copyright Act Cap. C28 (LFN 2004) Literary works include novels, stories, choreographic works, computer programmes and etc. musical works also include works composed for accompaniment. Artistic works include painting, drawing, woodcut, maps etc.

Cinematographic film include fixation of sequence of visual image that can be seen and associated sound tracts that can be held. Sound recording on the other hand is a fixation of sequence of sound capable of being held but does not include sound track associated with cinematographic films. The above works will be eligible for copyright if sufficient efforts have been expended to give them an original character (i.e. originality) and if the works have been fixed in a medium of expression (i.e. fixation) now known or later to be developed. However, an artistic work made with the intention to be used as a model or pattern to be multiplied by an industrial process will not pass for copyright but will qualify as an industrial design which shall be aptly described later in this article.

WHO IS ENTITLED TO COPYRIGHT IN NIGERIA?

The following persons are entitled to copyright in Nigeria:

1. Persons who are either Nigerian citizens or domiciled in Nigeria;
2. Persons whose work are first published or made in Nigeria;
3. Persons who are employed to make a work in the course of their employment;
4. Persons who are commissioned to make a work;
5. Proprietors whose works are made by authors in course of their employment by the proprietor for the purpose of publication in a newspaper, magazine or similar periodicals;
6. Persons to whom the copyright has been transferred either by assignment or testamentary dispositions; persons to whom license have been granted;
7. The Government, where it has commissioned someone to make a work;
8. Companies registered in Nigeria which produces works of copyright;
9. Non-Nigerian who are neither domiciled in Nigeria but belong to a Convention Country to which Nigeria is a party provided their works are first published in such convention country, or by the United nations, the African Union or ECOWAS.

DURATION OF A COPYRIGHT

Copyright in Literary, Musical and Artistic works other than photographs shall expire seventy years after the end of the year in which the author dies. If the author is a corporate body, seventy years after the end of the year in which it was first published. In case of cinematographic films, sound recording and photographs, the copyright shall subsist for fifty years after the recording was first made and fifty years after the shot was first taken in case of photographs. With respect to Broadcast works, the copyright will expire fifty years after the end of the year in which the broadcast first took place.

THE RIGHT CONFERRED ON A COPYRIGHT OWNER

Copyright in Literary and Musical works for example guarantee the exclusive right of the owner to reproduce, publish, perform, adapt, distribute, sell and broadcast An artistic work will also guarantee the owner the exclusive rights of control of the reproduction, publication and adaptation of the work. In the case of a cinematographic film the copyright owner has the exclusive control to make copies, record and distribute copies. In respect of sound recording, the copyright owner can exclusively control the direct or indirect reproduction and distribution. Lastly, the copyright owner of a broadcast can also exclusively control the recording and communication of the work.

COPYRIGHT ADMINISITRATION IN NIGERIA

The Nigerian Copyright Commission (the Commission) is the regulatory body for copyright administration in Nigeria. The Commission is an agency of the Federal government under the Ministry of Trade, Commerce and Industry. The Commission establishes Collecting Societies which are authorized to collect dues, royalties and fees of Copyright owners of the particular specie of work for which they are set up.

The Commission provides for Copyright Inspectors whose primary duty is the protection of copyright against infringement in Nigeria. It must be noted however that the law does not mandate the registration of copyright in Nigeria. The law only requires that publishers, printers, producers and manufacturers of works should keep records of all works produced by them showing the name of the author, title, year of publication and the quantity of the work produced.

The Commission is also empowered to maintain an effective data bank on authors and their works Nevertheless, in practice, the Commission does register copyrights upon being notified by the copyright owners under the Copyright Notification Scheme of the Commission, thus creating a centralized copyright database, like we have in other jurisdictions. It must nonetheless be emphasized that registration of copyright works is not a requirement of copyright itself. It is merely required for administrative convenience and purpose. Thus failure to notify or register does not whittle down the copyright of any work; registration only adds documentary ownership value to an existing copyright work.

COPYRIGHT NOTIFICATION

Copyright Notification is a scheme designed by the Nigerian Copyright Commission to enable creators of certain copyright works or persons who have acquired rights in these works to give notice of their copyright to the Nigerian Copyright Commission or notice of any transfer of right thereof. Such facts as are disclosed in the notification will form part of the database of the Commission mandated to be kept under the Copyright Act, and has evidential value in proof of the possible date of creation of the work and other facts stated in the notification form.

PROCEDURE FOR COPYRIGHT NOTIFICATION

1. The applicant will fill the form in line with the instructions provided on it, and ensure that the declaration therein is endorsed before a Commissioner for oaths or Notary Public.
2. The completed application form with required copies of the work, which the applicant is seeking notification should be returned to the Commission’s office nearest to the applicant and accompanied with the required documents and evidence of payment of Notification fees.
3. Upon receipt of the form, the Commission processes same and issues applicant with a Notification Acknowledgement Certificate.

STEP BY STEP REQUIREMENT FOR REGISTRATION

• Company name.
• Address of the company.
• Email address.
• Phone number.
• Name of the proposed mark to the proposed mark, invention, design or right to be registered.
• Copies of the items to be registered (design, image, logo, invent, book etc.)