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Intellectual Property And Technology

The Intellectual Property and Technology Group (IPTG) works with clients to attain effective protection for their brands, intangible assets, concepts and business operating plans.

We provide well thought through, practical and commercially sensible legal solutions to clients with respect to their intellectual property and technology acquisition needs. This entails provision of legal advice on their Intellectual Property (IP) rights in relation to brand names and their usage, creative works and inventions, product development, licensing and exploitation of intellectual property rights and acquisition and transfer of technology. Our anti-counterfeiting practice involves conducting investigations and working with the relevant agencies of the government to prosecute offenders and remove the offending products from the market.

Intellectual Property & Technology

Introduction

The Firm’s Intellectual Property and Technology Group (“IPTG”) assists foreign and local clients in the establishment, management and enforcement of their intellectual property (“IP”) and technology related rights in Nigeria. This entails:

  1. provision of legal advice on their IP rights in relation to brand names and their usage, creative works and inventions, product development, licensing and exploitation of IP rights and acquisition and transfer of technology;

  2. prosecution of trademark, patent and designs applications (new applications, renewals, recordals of licenses, assignments, mergers etc.) in Nigeria;

  3. provision of anti-counterfeiting services which involves conducting investigations and working with the relevant agencies of the government to prevent counterfeits from entering the market, apprehend and prosecute offenders and remove the offending products from the market;

  4. representing clients in litigation matters and issuing legal opinions on threatened or brewing intellectual property disputes; issuing petitions/protest letters and making representations to regulatory authorities in respect of clients’ intellectual property rights (where required); and

  5. product registration and regulatory compliance with agencies including the National Agency for Food and Drug Administration and Control (NAFDAC); National Office for Technology Acquisition and Promotion (NOTAP); Standards Organization of Nigeria (SON); Advertising Practitioners Council of Nigeria (APCON); Nigerian Copyright Commission (NCC) and the Nigerian Broadcasting Commission (NBC).

In the area of IP in particular, the IPTG covers not only Nigeria but other African countries and jurisdictions, including the African Intellectual Property Organisation (OAPI) and African Regional Intellectual Property Organisation (ARIPO) member countries, through an efficient network of local associates.

We are active members of different local and international IP professional associations and committees (listed below). This ensures that we are in touch with the latest developments and innovations in the IP field.

  • A Partner in the Firm is the President of Intellectual Property Law Association of Nigeria (IPLAN).

  • The firm is the Nigerian member of the Global Advertising Lawyers Alliance (GALA), an international alliance of law firms in more than 50 countries, providing a one-stop shop for clearance of international advertising campaigns, as well as advertising law practice.

  • The Firm is an active member of the Anti-Counterfeiting Collaboration (ACC) Nigeria and is involved in all its activities geared towards review of applicable laws, and the creation of public awareness on the dangers of counterfeiting and piracy.

  • A Partner and other members of the IP practice group served/are actively serving on various sub-committees of the International Trade Marks Association (INTA) including the INTA MEASA Anti-Counterfeiting Sub-Committee, INTA Legal Practice Resources Committee, INTA African Trade Marks Offices Sub-Committee, INTA Trademarks Administrators Committee and INTA Trademark Reporter Committee.

  • Members of the Firm are active members of the Intellectual Property Committee of the Nigerian Bar Association’s Section on Business Law.

  • A Partner and other members of the IP practice group served/are serving on various committees reviewing and making recommendations regarding the IP regulatory authorities (e.g., the merger of the Trade Marks, Patents and Designs Registries with the Nigerian Copyright Commission).

  • The Firm has a specialist team of litigators and Alternative Dispute Resolution (ADR) experts who have relevant experience in Intellectual Property disputes. The specialist team continually devises winning strategies to ensure adequate protection of our Nigerian and foreign clients’ intellectual property rights and interests. The team is currently advising on, prosecuting and defending a number of intellectual property related suits before the Federal High Court, on behalf of clients.

  • Members of the Firm have delivered presentations and papers on intellectual property Law and practice at various local and international fora such as the Anti- Counterfeiting Collaboration (ACC) Roundtable, the Conference on the International Aspects of IP Law, in the U.S.; Global IP in Munich, Germany and to companies such as the British American Tobacco, Nigeria and Nigerian Stock Exchange.

  • We regularly conduct intellectual property legal audits/ due diligence exercises on companies engaged in various business transactions. Our scope of work usually includes the review and or drafting of IP manuals and policies, brief presentations or write-ups on intellectual property etc.

  • We are also regularly engaged in legislative watch and Legislative Drafting.

  • Our lawyers regularly attend relevant trainings both locally and internationally, which equip them with the requisite knowledge and skills for intellectual property law and practice. Some of the trainings attended include the intellectual property law sessions at the annual conferences of the International Bar Association; Nigerian Bar Association and International Trade Mark Association respectively. Other trainings attended by lawyers in the Firm include the INTA Advanced Anti-Counterfeiting Strategies, Falconbury International Intellectual Property Summer School (Cambridge, United Kingdom); United States Patent and Trademark Office; World Intellectual Property Organisation (trainings and seminars on the Patent Cooperation Treaty and Patent Law Treaty; Copyrights; TRIPS; Managing Intellectual Property; Trademarks, Industrial Designs, and Geographical Indications); Nigerian Institute of Advanced Legal Studies; American Bar Association Section on Intellectual Property Law; Spoor and Fisher (Leading South African IP Law Firm) Training on Intellectual Property Due Diligence, Intellectual Asset Management and Intellectual Property Valuation; Alternative Dispute Resolution in Intellectual Property, Telecommunications, Internet and Sports (organized by WIPO, NOTAP, IPLAN & Nigeria Football Association) etc.

  • Lawyers in the Firm are members of the International Trademarks Association, , Anti-Counterfeiting Collaboration, Nigerian International Franchise Association, Institute of Chartered Secretaries and Administrators   (UK);   Chartered Institute of Taxation of Nigeria; Real Estate Lawyers’ Association of Nigeria (RELAN); Chartered   Institute   of   Arbitrators,   UK   and   Nigeria; the Centre for Effective Dispute Resolution (CEDR), UK, the Negotiation and Conflict Management Group (NCMG), the Panel of Neutrals: Lagos Multi-Door Courthouse (LMDC), the Nigerian Maritime Law Association (Nigerian Chapter of the Comite Maritime International (CMI)) and   the Association of International Petroleum Negotiators. Some Counsel in the Firm are members of the International Bar Association and the New York Bar; in addition to all counsel being members of the Nigerian Bar Association.

  • The firm is also an active member of:

    • The Pharmaceutical Trade Marks Group (PTMG);

    • The Intellectual Property Law Association of Nigeria;

    • Intellectual Property Committee of the Section on Business Law, Nigerian Bar Association;

    • Nigerian International Franchise Association (NIFA)

    • The International Trademark Association (INTA);T

    • he Association of European Trade Mark Owners (MARQUES);

    • The Institute of Trade Mark Attorneys (ITMA); and

    • Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI).

    Our presence at these international fora and active participation in different professional associations and committees, nationally and internationally, ensures that we are in touch with the latest developments and innovations in the IP field.

  • To achieve maximum efficiency and effectively meet clients’ needs, the Intellectual Property and Technology Practice Group is divided into the following Units:

    • Trademarks, Domain Name Registration and Regulatory Compliance;

    • Patents and Designs;

    • Copyright and Anti-Counterfeiting;

    • Technology, Media and Entertainment; and

    • Africa Practice

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CLIENTELE

We act for and advise companies and corporations in different sectors, including manufacturing companies, pharmaceutical companies, other fast moving consumer goods (FMCG) producers, media and entertainment corporations, financial institutions and conglomerates, as well as International law and consultancy firms.

We have set out hereunder, a representative list (in alphabetical order) of companies and IP agents for whom we manage IP portfolios and/or advise on a wide range of Intellectual Property and Technology issues including product registration: 

Advance China

 

Arla Foods Inc./Arla Foods amba (Denmark)

Avon Products Inc.

BlackBerry (formerly Research in Motion) (Canada)

Bureau National Interprofessionnel Du Cognac (BNIC) (France)

Church & Dwight Co. Inc.

Comite Interprofessionnel du Vinde Champagne (CIVC) (France)

Computer Warehouse Group Plc. (Nigeria)

 

CPA Global Limited

 

DM Kish Inc.

 

Ebro Foods S.A.

 

Greenwich Trust Limited (Nigeria)

 

General Mills Inc. (USA)

 

GlaxoSmithKline (UK & Nigeria)

 

Groupe Danone (France)

 

Honda Motor Europe Limited

 

Institut National de l’origine et de la qualite (France)

 

Josien Holdings (Nigeria) distributors of Moet et Chandon etc.

 

Linde AG (Germany) 

 

 Leo Pharma A/S (Denmark) 

 Main One Cable Technologies

 

Mantrac Group

 

Marks & Clerk

 

Miswa Chemicals (UK)

 

Namaste Laboratories LLC (USA)

 

Nigerian Stock Exchange (Nigeria)

 Nigerian Breweries Plc – Nigeria

 

 Novagraaf Group B.V.

 

Organo Gold

 

Promasidor Nigeria Holdings Ltd.

 

Reed Smith (USA)

 

Samsung Electronics West Africa Limited

 

Samsung Group (South Korea)

 

Syngenta Participations AG

 

Vlisco B.V. – The Netherlands

 

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OUR EXPERIENCE

Some of our recent experience includes:

  • We are retained agents to CPA Global Limited (formerly Computer Patents Annuities) the world’s largest trademark renewal agency (from 1996 till date), for whom we provide trademark management services;

  • We are currently assisting a renowned Japanese public multinational corporation and manufacturer of automobiles, motorcycles and power equipment in the protection of its IP interests from infringers and counterfeiters in Nigeria. In this regard, the anti-counterfeiting campaign covers conducting market searches and investigations at certain major market cities of the country; petitioning the relevant regulatory authorities including the SON and Customs, engaging in public enlightenment campaigns and obtaining relevant court orders;

  • We are advised a global dairy products company on the procedure for the registration of products at NAFDAC and on various legal issues in connection with change of manufacturer’s representative in Nigeria and transfer of product registration; we also assisted the company in transferring the product registrations/ marketing authorisation licenses to its new local representative;

  • We advised a multinational food and beverage company on the legal framework for distributorship and IP licensing in Nigeria; including issues such as the termination of distribution agreement, appointment of new distributor;

  • We advised a leading marketer and distributor of medical and healthcare products, including electronic blood pressure monitors- in connection with the potential deployment of medical software in Nigeria.

  • We advised a South Korean multinational conglomerate on the legal framework for distributorship in Nigeria, as well as on anti-trust and competition law issues, issues relating to parallel importation of regulated products and importation generally;

  • We recently advised one of the world's largest social network companies with regard to compatibility of its proposed new products with Nigerian IP laws and in particular on issues relating to legal risks of advertising in Nigeria in view of the requirements of APCON and other regulatory agencies;

  • We recently assisted a world famous media personality and brand owner with ongoing investigations regarding the source and destination of certain counterfeit beauty products;

  • We are advising an international cosmetics manufacturer in respect of impending trademarks litigation in Nigeria;

  • We recently advised the Nigerian Stock Exchange in connection with the protection and commercialisation of the NSE’s intellectual property rights. Our services included conduct of due diligence audit of the NSE’s subsisting contracts to confirm the adequacy of the intellectual property provisions therein, prosecution of trademark filings at the Trade Marks Registry, advising on various means of preventing infringement of and enforcing the NSE’s intellectual property rights , drafting an IP Policy document etc;

  • We recently advised Greenwich Securities Limited in relation to the launching of its online trading platform. Our services included preparation of relevant legal documentation such as template Service Agreements and Terms of Service to be executed with different classes of clients as well as privacy policy statements, indemnity policy statements and advise on applicable intellectual property related issues and protection of trademarks, patents and designs developed and/or deployed in relation to the project;

  • We recently advised a company based in the United States on advertising regulations in Nigeria and the dispute settling procedures of APCON between companies in relation to advertisements;

  • We advised a cosmetic company based in the United States on issues involving the registrations of its brands at NAFDAC, and on other issues relating to its local subsidiaries and distributors in Nigeria. We further advised on importation of their products into Nigeria;

  • We are retained Counsel to a leading credit bureau and a leading card personalisation bureau and manufacturing company in Nigeria. Our services include preparation and negotiation of various agreements and documents such as software licence agreements, Terms of Service for various information and communication technology based products and services and in relation to protection of intellectual property;

  • We are currently prosecuting product registration with the NAFDAC on behalf of:

    • a privately held Italian global manufacturer of confectionery and gum;

    • an international company providing consumer products and services in the areas of Health and Beauty;

    • a multi-level marketer of coffee and personal care products; and----a major distributor of alcoholic beverages in Nigeria.

  •  We are acting for a Dutch entertainment company (as Plaintiff) in a suit against a Nigerian entertainment company for the protection of its copyright in a popular internationally-viewed television broadcast;

  • We are acting for a French Company in a trademark infringement suit filed against a Nigerian Company which is operating a hotel in the name of the client’s internationally renowned trademark;

  • We are acting for a multinational company based in Denmark (as Plaintiff) in a suit against a French company, which has infringed on its patent in Nigeria;

  • We are defending a leading Nigerian telecommunications company in a patent infringement suit in which we are contesting the validity of the alleged registered patent;

  • We are defending a leading Nigerian telecommunications company in a copyright infringement suit in respect of a reality show which the company sponsored;

  • We are defending a reputable Nigerian company in an action filed against it by an association of artistes in respect of royalties allegedly payable to it (the company) for its members (artistes) featured in the company’s musical show;

  • We obtained Anton Piller orders of injunction on behalf of a top Nigerian brewing company to prevent an infringement of its registered design;

  • We defended a top IT company in respect of an alleged copyright infringement claim of $7.5 Million.

  • We provided legal advisory services in the course of the pre- and post-production stages of a movie. Our services included handling all the legal aspects of the film adaptation including negotiating the relevant contracts with the artistes etc., drafting/ reviewing various agreements such as the film production agreements, funding agreements and other documentation as well as provision of legal advice on intellectual property rights in the Movie and the various options available to it to protect its rights in the Movie;

  • We advised Broadcasting Company on the engagement of two (2) internationally well-known Nigerian musicians for performance at a major concert in Nigeria. Our responsibilities included attending meetings and assisting with the drafting and negotiations of Artiste Engagement Agreements between the Company and the artistes, and advising on the IP rights of all parties, including issues relating to copyright, licensing of recordings and related matters;

  • We recently advised on an infringement claim arising from the commercial use and exploitation of the images of an international sports figure in advertisement. Our services.

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 IP DETAIL

  • We advised a British pharmaceutical company which is also one of the world’s largest pharmaceutical companies, in relation to the divestment of its drinks business to the Nigerian subsidiary of a Japanese brewing and distilling company group. Our advice covered, among others, regulatory compliance issues including assisting the client (the seller) with the transfer of its NAFDAC product registration certificates to the buyer, together with obtaining the necessary regulatory, environmental, health and safety licenses and permits to enable both companies continue with their individual businesses, seamlessly; as well as other ancillary matters

  • We advised a global dairy products company on the procedure for the registration of products at NAFDAC and on various legal issues in connection with change of manufacturer’s representative in Nigeria and transfer of product registration; we also assisted the company in transferring the product registrations/ marketing authorisation licenses to its new local representative;

  • We advised a multinational food and beverage company on the legal framework for distributorship and IP licensing in Nigeria; including issues such as the termination of distribution agreement, appointment of new distributor etc.;

  • We advised a leading marketer and distributor of medical and healthcare products, including electronic blood pressure monitors- in connection with the potential deployment of medical software in Nigeria.

  • We are company secretary and legal advisers to a global Network Marketing company engaged in the sale of renowned premium beverages (coffee and tea products). We currently act for the company with the registration of its food and beverage products at NAFDAC;

  • We are currently assisting a French winery which is one of the world’s largest champagne producers and co-owner of a luxury goods company with the registration of its drink products at NAFDAC. We also provide regular legal and regulatory advisory to the company;

  • We assisted a privately held Italian global manufacturer of confectionery and gum with prosecuting its product registration with NAFDAC;

  • We advised a cosmetic company based in the United States on issues involving the registrations of their brands at NAFDAC, and on other issues relating to their local subsidiaries and distributors in Nigeria. We further advised on importation of their products into Nigeria;

  • We conducted investigations on behalf of a leading food and beverage company based in Ghana, into the source of the counterfeit of its canned tuna products which were being imported and marketed to Nigeria. We are currently liaising with NAFDAC to conduct a raid of identified markets trading in the offending products;

  • We advised a South Korean multinational conglomerate on the legal framework for distributorship in Nigeria, as well as on anti-trust and competition law issues, issues relating to parallel importation of regulated products and importation generally;

  • We provided advice to a multinational electronics company in relation to its rights under various distributorship agreements with its dealers, importation of products into Nigeria as well as a detailed review of the product registration framework with the SON. We also engaged members of the customs services and SON in relation to importation of the client’s products into Nigeria;

  • We are currently assisting a renowned Japanese public multinational corporation and manufacturer of automobiles, motorcycles and power equipment in the protection of its IP interests from infringers and counterfeiters in Nigeria. In this regard, the anti-counterfeiting campaign covers conducting market searches and investigations, petitioning the relevant regulatory authorities including the SON and Customs, engagement in public enlightenment campaigns and obtaining relevant court orders;

  • We advised a pharmaceutical company based in the United States on issues relating to the registration of its medical device with the SON;

  • We recently advised a company based in the United States on advertising regulations in Nigeria and the dispute settling procedures of APCON between companies in relation to advertisements;

  • We recently advised one of the world's largest social network companies with regard to compatibility of its proposed new products with Nigerian IP laws and in particular on issues relating to legal risks of advertising in Nigeria in view of the requirements of APCON and other regulatory agencies;

  • We recently advised a global brand and creative design consultancy agency on an infringement claim arising from the commercial use and exploitation of an international sports figure in advertisement. Our advisory covered legal advertising regulatory and compliance issues among other IP issues.

  • We are advised a leading international lodging company (with more than 3,400 lodging properties in 68 countries) and its Nigerian affiliate in establishing a world-class hotel with approximately 250 guest rooms in Nigeria. Our responsibility includes reviewing the Project Agreements, including the Management Agreement, the License and Royalty Agreement, the International Services Agreement and the Advisory & Consultancy Services Agreement, to ascertain their consistency and conformity with Nigerian laws and regulations, and registration of such documents with the NOTAP, where necessary;

  • We are also currently advising the Nigerian Communications Commission and the Federal Ministry of Information Communication Technology in relation to the preparation of a draft bill for a law which designates information and communications infrastructure in Nigeria as critical national infrastructure and establishes a framework for the security and protection of such infrastructure. Our duties involve conducting a comprehensive review of the current framework for ICT infrastructure protection in Nigeria, drafting of the bill and provision of support with stakeholders' engagement and other aspects of the process;

  • We drafted the SIM Card Registration Regulations on behalf of the Nigerian Communications Commission (NCC) and provided support with stakeholders' engagement and other aspects of the process of the issuance of the regulations;

  • We are defending a leading Nigerian telecommunications company in a patent infringement suit in which we are contesting the validity of the alleged registered patent;

  • We are defending a leading Nigerian telecommunications company in a copyright infringement suit in respect of a reality show which the company sponsored;

  • We recently advised one of the world’s largest multimedia retailers and broadcasters, on the requirements, documentation and procedure for filing a domain name complaint as well as assisted the client with filing the Complaint at the Nigerian Internet Registration Authority (NIRA) under the NDRP procedures in respect of the infringement of its domain name by a Nigerian Company.

  • We regularly provide legal advice on advertising standards and other regulatory compliance issues to Dutch brewing company which is one of the oldest and most renowned brewing companies in the world through its international advertising agency, in respect of its proposed advertising campaigns. In this regard, we regularly review the scripts for the advertisements to confirm their compliance with advertising, broadcasting and other regulatory standards in Nigeria

  • We provided legal advice to multi-local food manufacturer that produces, distributes and markets quality range of products in more than 25 countries across the continent, in relation to one of its media campaigns. Our scope of work included drafting and negotiating agreements with brand ambassadors and media personalities; drafting and negotiating agreements in relation to sponsorship of media CSR  initiatives and a Television show on the competition; drafting and negotiating agreements pertaining to outdoor media campaigns, events productions and media monitoring etc.

  • We successfully prosecuted a suit, on behalf of the pioneer and largest brewing company in Nigeria against a collecting society, which opposed our client’s right to record, produce and/or broadcast music performed by certain artists that participated at its popular annual show”. 

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