Strengthening Intellectual Property Rights And Protection In Nigeria

• Administrative Bottlenecks at the Trademarks, Patents and Designs Registry (“Registry”): Since inception in 1967, the Registry has been riddled with several problems including but not limited to (i) lack of adequate funding; (ii) inadequate space for its operations; (iii) lack of well trained personnel; (iv) lack of an electronic database. All these have resulted in a disorganized filing system whereby IP files get mislaid or lost, an unduly protracted IP registration process (some trademark applications are known to have been registered well after the expiration of the seven (7) years initial validity period of their registration) and opposition process, lack of qualitative rulings issued by the Registry, and lack of funding to efficiently and effectively run the Registry.

• Absence of a Ministerial Declaration on Convention Countries: The Paris Convention for the Protection of Industrial Property (1883) permits a right owner that has filed an application in one of the contracting states, to take advantage of the filing date for the application where it applies for protection of the same rights in any of the other contracting states; provided that the application is made in those other contracting states within a certain period of time of the initial filing in the first contracting state. The subsequent application will be regarded as if it had been filed on the same day as the first application. In other words, it will have priority over applications filed by others during the said period of time, for the intervening period between the initial application and the subsequent application. The Patents and Designs Act as well as the Trade Marks Act requires the relevant Minister (in this case the Minister of Trade & Investment) to declare by order in the Federal Gazette, that any country specified in the order is a convention country for purposes of filing convention applications and claiming priority rights. However, Nigeria is yet to make this declaration in respect of Trade Marks in Nigeria. Notwithstanding, the Registry still accepts priority applications for registration despite there being no legal basis for doing so. Regarding Patents, the declaration was last made in 1971, recognizing all the Paris Union member-countries at that material time as “Convention Countries”. In effect, Nigerian IPR holders or foreign holders with interest in the Nigerian market are severely limited in the scope of the protection that is available to them, under the current legal framework in the country.

• Nigeria is yet to take full benefits of multilateral efforts: The country is not a member of some prominent multilateral organizations that provide for regional and international registration of IPRs, such as the Harare-based African Regional Intellectual Property Organisation (“ARIPO”); the Yaoundé-based Organisation Africaine de la Propriété Intellectuelle (“OAPI”); and the Geneva-based International Patent Cooperation Union (“IPCU”) formed based on the 1970 Washington Treaty – the Patent Cooperation Treaty (PCT). Neither has it ratified in accordance with Section 12 of the 1999 Constitution, recent intellectual property treaties and conventions to which it is signatory.

• Regulatory conflicts and lacunae: There is a lack of coordination among various agencies whose regulatory functions impact IPRs in the country which largely make holders of registered IPRs or their licensees easily vulnerable to infringement. A ready example is the lack of common data bank or depository for regulatory alliance, among relevant government agencies and departments charged with the registration of business, commercial transactions and IPRs. For instance, while the Companies and Allied Matters Act (“CAMA”), (Cap. C20, LFN 2004), prohibits the registration of a company or business by a name which would violate, or is similar to, any existing trade mark registered in Nigeria without the consent of the owner of the trade mark; there are no mechanisms for data synergy between the Corporate Affairs Commission (“CAC”) and the Trade Marks Registry, to ensure efficient enforcement of the prohibition. Also, there is no similar provision in the Trade Marks Act. Another example is the Notice of Acceptance of trademark which is accepted by the National Agency for Food and Drug Administration and Control (“NAFDAC”) as one of the documents for registration of a regulated product. However, where such trademark has been successfully opposed pursuant to the Trade Marks Act, there is usually no communication to NAFDAC.

• Challenge of IPR enforcement: A very serious challenge facing IPR owners in Nigeria is the lack of an efficiently deterrent enforcement system. It appears that reforming our IP legislation alone may not achieve optimum results in protecting IPR holders, except the mechanism for enforcing the law is equally enhanced. Law enforcement agents, particularly the Nigerian Police Force and the Nigeria Customs Service, need to be more empowered to carry out their policing and prosecution functions. Experience shows that insufficient finance, inadequate or obsolete equipment and lack of up-to-date skills in the use of modern technologies among the rank and file of officers; prevent the various efforts being made in combating IPR infringement from achieving desired results.

• Dearth of Judicial Precedent in IP: There is also a dearth of IP cases in the country and this indicates that more effort needs to be made among the sector stakeholders (particularly IP lawyers, judges, judicial bodies, law teachers and law reform commissions, regulatory bodies and the general populace) towards developing Nigerian jurisprudence in this area. This problem is also exacerbated by the inadequate numbers of competent judges skilled in IP laws in the nation’s judiciary.