INTELLECTUAL PROPERTY LAW

Introduction

Intellectual Property (IP) refers to the creation of the mind, which emerges from the human intellect. IP is an intangible asset as opposed to real properties like land or buildings. The World Intellectual Property Organisation describes the concept of IP to mean:

“The creations of the mind, such as inventions, literary and artistic works; designs; and symbols, names and images used in commerce. It covers everything from works of art to inventions, computer programs to trademarks and other commercial signs.”

The primary purpose of intellectual property is to encourage creativity and innovation and ensure that creatives’ works are adequately protected. Precisely, it seeks to ensure that individuals who have expended efforts can benefit from the products they have created.

Intellectual Property Law and Intellectual Property Right

IP rights refer to an exclusive right of ownership of intangible assets created by the mind or the brain. For instance, where a poet writes a poem, IP rights refer to the poet’s right to own the poem exclusively and derive economic and moral right from such a poem.

On the other hand, IP laws refer to the regulation covering the creation, transfer, and protection of these rights. In other words, IP laws refer to the regulation guiding the whole existence of IP rights. For example, in the scenario above, the law guiding the poems will be the Copyright Act.

Forms of Intellectual Property Rights

The law provides different forms of protection that an intellectual property owner can acquire or apply for. Typically, this is based on the type of creation in question and upon satisfaction of the requirements laid down by the governing law or statute. Generally, there are two utmost classifications of IP – Copyright and Industrial Property. Industrial Property includes Trademark, Patent, Industrial Design. In turn, the available forms are as follows:

  • Copyright: This form of right gives exclusive control of acts like production, publication, distribution, etc., to owners of literary, musical, artistic works, cinematographic films, sound recording, and broadcasts. They can authorise or forbid the publication and distribution of any of these acts.
  • Trademark: This offers protection to phrases, symbols, and slogans registered in connection with a brand. It helps a consumer to identify a product or differentiate it from a counterfeit quickly. For example, ‘a slightly bitten apple’ automatically brings Apple Inc. to mind, ‘A swoosh sign’ or ‘Just do it’ makes one think of Nike.
  • Patent: This is an exclusive right used to protect inventions or processes that are new, not obvious, and useful. The patent holder has the monopoly to grant the license or sell to a third party for an initial period of 20years and subsequently renewed. On expiration, the invention process divulges to the public. The traffic light is a notable patent granted to Garett Morgan in 1923.
  • Trade Secret: As the name implies, it protects confidential procedures, recipes exclusive to the company that owns and uses it. For example, the famous KFC chicken recipe is unknown to the public.
  • Industrial Design: This form seeks to protect the outlook, design or physical feature, or appearance of an item. The Coca-Cola contour bottle is an excellent example of what industrial design is created to protect.
  • Geographical Indication: This form of protection is used for goods with distinct qualities based on the place they originated from. For example, the famous Champagne (sparkling wine) originates from Champagne in France.

It is essential to know that while a form of protection may work for a particular creation, another category may not adequately protect it. Therefore, one needs to have a proper understanding of one’s work or product and a lawyer’s help to ascertain the best form of protection before applying to have their work protected.

Introduction

Copyright is one of the forms of Intellectual Property rights. It protects the expression of an idea. When a person has copyright over a particular work, they have the exclusive rights to the ownership, distribution, and publication of such work. The right precludes other persons from using the work without permission or reproducing such work without permission, among other things.

Black’s Law Dictionary defines copyright as:

“An intangible, corporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he is invested, for a specific period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them.”

In the case of Sony Corporation of America v Universal City Studios 464 US 417 (1984), the supreme court noted that:

“Copyright is intended to motivate the creative activity of authors and inventors by the provision of special reward and to allow the public access to the products of their genius after the limited period of exclusive control has expired.”

Therefore, copyright seeks to protect the interests of creatives. It also aims to strike a balance between creatives adequately benefiting from the fruits of their labour and providing access to the public.

Berne Convention

 The Berne Convention for the protection of literary and Artistic Works was signed in 1886. It provides three primary principles for copyright protection, and they are:

  • National Treatment: A state party must accord the same protection it gives to its nationals under the convention to works originating from citizens of other member states.
  • Automatic Protection: Protection is automatic; thus, member states should not make protection conditional on the fulfilment of any additional formality.
  • Independence of Protection: The protection of a work of a national of another state party is not dependent on the existence of protection in the work’s country of origin.

Additionally, the convention provides a minimum standard of protection that member states are to maintain concerning the works that can be protected, the rights that come with the protection, and the protection duration.

Article 2(1) provides that protection must include “every production in the literary, scientific and artistic domain, whatever the mode or form of its expression.”

The rights which come with certain limitations include the right to translate, make adaptations, perform, reproduce, etc. It also provides for moral rights, i.e. the author’s right to object to any mutilation, deformation, or other modification of or other derogatory action concerning the work that would be prejudicial to the author’s honour reputation. The general minimum duration of protection is 50 years after the death of the author.

The convention also makes provision for developing countries interested in making use of them.

Universal Copyright Convention

Developed by UNESCOit was adopted at Geneva in 1952 as an alternative to the Berne convention because some states disagreed to some aspects of the Berne convention but still wanted multilateral copyright protection.

It provided that

  • State parties should provide the same protection it gives to its citizens to foreign published work.
  • The minimum duration for copyright protection is 25years after the author’s death, ten years, however, for photographic and applied artwork.
  • States that require formal registration are to treat works of nationals of other signatory states as though they had been registered in the state provided they carry a notice, which includes the copyright symbol and states the name of the owner.

The convention has however lost its significance because most states are now members of the World Trade Organisation and have to adhere to Trade-Related Intellectual Property Rights (TRIPS)

Rome Convention 

The Rome convention adopted 1961 is open to states party to the Berne Convention or the Universal Copyright Convention. The international community conveyed it in response to the emergence of tape recorders that made it easier to reproduce sounds and images; other copyright conventions only regulated printed materials or works. The convention seeks to protect performers (actors, singers, musicians, dancers and those who perform literary or musical works) for their performances, producers of phonograms for phonograms and broadcasting organisations for their broadcastsThese persons and organisations had rights to authorise or forbid acts concerning their works like reproduction, broadcast, and rebroadcast.

The duration of protection is at least 20 years from the end of the year that

  1. the fixation was made for the phonogram or performances incorporated in a phonogram
  2. the performance took place(where it is not in a phonogram)
  3. the broadcast took place

Trade-Related Aspects of Intellectual Property Rights 

 It is a multilateral agreement between all member nations of the World Trade Organisation. It came into effect on 1 January 1995. Till date, TRIPS is still the most comprehensive multilateral agreement on intellectual property. It combines the Paris and Berne convention’s substantive obligations, except the provision of the moral rights and makes provision on obligations that older conventions are silent on. It also has its obligations relating to performers, sound recording, producers and broadcasting organisations. Members are free to determine how to integrate the provisions of the agreement into their legal system.

W.I.P.O Copyright Treaty

Created under the Berne Convention, it deals with protecting the rights of authors in the digital space. It also includes computer programs in its protection and computer programs, whatever the mode or form of expression and databases.

There are six categories of works eligible for copyright protection. This is provided for by section 1 of the Copyright Act. They are:

Literary Works

According to Section 51 of the Copyright Act, it covers, irrespective of literary quality, any of the following works or that similar thereto:

  • Novels, stories, and poetical works;
  • Plays, stage directions, film scenarios, and broadcasting scripts;
  • Choreographic works;
  • Computer programmes;
  • Text-books, treatises, histories, biographies, essays, and articles;
  • Encyclopaedias, dictionaries, directories, and anthologies;
  • Letters, reports, and memoranda;
  • Lectures, addresses, and sermons;
  • Law reports, excluding decisions of courts; and
  • Written tables or compilation.

Musical Works

Section 51 of the Copyright Act defines it to mean any musical composition, irrespective of musical quality and includes works composed for musical accompaniment.

It covers the written lyrics of a song created by a composer or songwriter. Where this does not exist, a sound recording cannot be made. If no one composes songs, there will be nothing for artistes to record or even perform.

Artistic Works

They include irrespective of artistic quality, any of the following works or works similar to it-

  • Paintings, drawings, etchings, lithographs, woodcuts, engravings, and prints. In the case of Kenrick v Lawrence (1890) 25 QBD. 99, a simple drawing of a human hand showing voters were to mark their cross on a voting card was accorded copyright protection;
  • Maps, plans, and diagrams;
  • Works of sculpture;
  • Photographs not comprised in a cinematographic film;
  • Works of architecture in the form of building models; and
  • Works of artistic craftsmanship and pictorial woven tissues and articles of applied handicraft and industrial art; provided that when the work was done, the author did not intend to use it as a model or pattern to be multiplied by any industrial process.

Cinematograph Films

This includes the first fixation of a sequence of visual images capable of being shown as a moving picture and of being the subject of reproduction and consists of the recording of a soundtrack associated with the cinematograph film.

Sound Recordings

This is the first fixation of a sequence of sound capable of being perceived aurally and of being reproduced but does not include a soundtrack associated with a cinematograph film. Sound recording is the everyday music you hear recorded by artists, bands, etc. For example, Fem by Davido, Smile by Wizkid, etc.

Broadcasts

This means sound or television broadcast by wireless telegraph or wire or both, or by satellite or cable programmes and includes rebroadcast.

It is not enough that work falls under one of the categories of works covered by the copyright act. In addition to this, section 1(2) of the Copyright Act provides that for a literary, musical, or artistic work to be eligible for copyright protection, it must satisfy the following conditions.

  1. Sufficient effort has been expended on doing the work to give it an original character.

It combines two factors, ‘sufficient effort’ and ‘originality,‘ both of which are not adequately defined by the Act.

Regardless, sufficient effort is a question of fact and was examined in Offrey v Chief S.O Ola & Ors Unreported suit No: HOS/23/68. The court held that

“Copyright would exist in a product if that product is the result of some substantial or real expenditure of mental or physical energies of the producer and not a negligible or commonplace one.”

It means that the author must have gone an extra mile over and above every other person before he could be said to have expended sufficient effort or even accorded copyright. In Cramp & Sons v Frank Smythson Ltd (1994) AC 329, the court held that a diary with the usual information such as calendar, weights, and measures found in diaries was not copyrightable. As there was no evidence that any of the tables were of unique composition, nor did it have an ingenious feature due to the compiler’s skill. In turn, this exemplifies that the effort must be substantial such that every reasonable person can infer that the effort was above normal effort and distinguishes it from other efforts.

On originality, courts have interpreted originality to mean that the work must have originated from the author and not others. Copying another’s work and passing it off as one’s (plagiarism) defeats the purports of originality. A piece like that cannot be copyrighted as it does not satisfy the condition of ‘originality.’

In the case of ICIC (Directory Publication Limited), v Ekko Delta (Nig) limited & Anor (1977) FHCLR 346, the plaintiff who were publishers of the national telephone directory of Nigeria published the directory of incorporated companies in Nigeria. They sued the defendants for reproducing same which affected their sales. The defendants established that the plaintiffs were not the original owners and that they had copied it. The court held that the work lacked originality and, as such, copyright did not exist in the directory.

  1. The work has been fixed in any definite medium of expression now known later or later to be developed from which it can be perceived, produced, or otherwise communicated either directly or with the aid of any machine or device.

For copyright to exist it is not enough to have an idea; the author must have been expressed in a fixed form. For example, copyright does not protect a story in your head till you have had it written down in a book or journal. This book is what satisfies the requirement that it must be fixed in a definite medium.

Noteworthy, the two conditions identified above are conjunctive. As such, both conditions must be satisfied with respect to a literary, musical, or artistic work before they can receive copyright protection. Precisely, the failure to meet any one of the requirements even when the other is satisfied will deny the purported owner copyright over a work.

Generally, a wide variety of works can be copyrighted as long as they satisfy the requirements identified above. However, it must be noted that some works cannot be copyrighted. Below are a few things not protected by copyright law:

  • Titles of books or songs, names, short phrases, slogans are not copyrightable. However, they may be protected by trademark law if it is mostly used in connection with a brand. As such, it is common to see books, songs, movies etc., having the same title.
  • Ideas, principles, procedures, discoveries, formulas. However, if an author chooses to express a principle or formula in a book, the literary form, which is the book may be protected by copyright. However, it does not prevent other people from using the formula or principle in such a book.
  • Facts are not copyrightable. For example, well-known facts like circles are round is not copyrightable. However, a book published to compile facts solely may be accorded copyright protection so far it satisfies the necessary copyright eligibility requirement. The copyright ascribes to the compilation of the fact not the facts in itself.
  • Works not expressed in a fixed form are not copyrightable as fixation is one of the condition precedents for copyright protection. If the work is not put in a fixed format, then no copyright. Copyright protects the expression of an idea, not an idea.
  • Works in the public domain. After copyright on a work expires, the work goes to the public domain. Automatically, works published before 1923 are in the public domain and are not protected by copyright.
  • Government statutes and press release, gazettes, court decisions are not copyrightable.

The Act lays down the categories of persons whose copyright can be conferred upon or can lay claim to copyright in Nigeria.

  1. Nigerian Citizens or Persons Domiciled in Nigeria: 

Section 2(1)(i) of the Copyright Act states

‘shall confer copyright on every work eligible for copyright of which the author or, in the case of a work of joint authorship, any of the authors is at the time when the work is made, a qualified person i.e., an individual who is a citizen of or is domiciled in Nigeria’.

  1. Companies That Produce Works of Copyright and Are Incorporated Under Nigerian Law:

The act confers copyright in Section 2(1)(ii) on every work eligible for copyright of which the author or, in the case of a work of joint authorship, any of the authors is at the time when the work is done, a qualified person, i.e. a body corporate incorporated by or under the laws of Nigeria’.

In Island Record Ltd and Ors. v Pandum Technical Sales and Services Ltd (1993) F.H.C.R 318, Belgore CJ dismissed the suit because the authors of the music (1st to 6th plaintiff) were foreign incorporated companies when the work was first recorded, and as such were not qualified to own a copyright under the act.

  1. Nationals of A Country or Person Domiciled That Is A State Party to A Treaty or International Agreement to Which Nigeria Is A Party:

Section 5(1) of the Copyright Act provides that these categories of persons can claim copyright over their works, provided that 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 a party.
  • by the United Nations or any of its specialised agencies.
  • by the African Union
  • by the Economic Community of West African states.
  1. Persons, Whose Works Are First Published in Nigeria Or Being A Sound Recording Made in Nigeria:

The copyright act in section 3(1) confers copyright on every work, other than a broadcast which is eligible for copyright and which:

  • being a literary, musical or artistic work or a cinematographic film, is first published in Nigeria; or
  • being a sound recording made in Nigeria, has not been the subject of copyright conferred by Nigerian citizenship or incorporation.

Thus, this section covers works made by non-Nigerians or persons not domiciled in Nigeria but makes a copyrightable work first published in Nigeria. For example, where a non-Nigerian comes for a week holiday in Nigeria and publishes the work first in Nigeria, his copyright ownership is recognised under this section.

  1. The Company Established Under the Law of a Country That Is A State Party to A Treaty or International Agreement to Which Nigeria Is A Party:

Section 5(1)(a)(ii) provides that companies which produce copyrightable works and are incorporated under the law of a country that is a state party to a treaty or international agreement to which Nigeria is a party can lay copyright claim. It is as a result of the international agreement.

  1. Persons Commissioned to Do Work:

By section 10 (2)(a) copyright belongs in the first instance to the author of a work where he is commissioned to do the work by a person who is not the author’s employer either under a contract of service or apprenticeship except stated otherwise in writing under the contract.

  1. An Employee Who Does Work in the Course of Employment: 

Section 10 (2)(b) provides that copyright belongs to the author/employee in the first instance except stated otherwise in the employment contract.

In the case of  Joseph Ikhuoria v Campaign Services Ltd & Anor (1986) F.H.C.R 308, Anyaegbunam J, held that although the plaintiff – a former employee was the one who did the work thereby making him the author, he had relinquished ownership right in his contract of employment. Therefore, copyright of the work no longer belongs to him but the employer.

  1. The Federal or State Government where it has commissioned someone to do work: 

Section 10(5) states that the copyright vest initially in the Federal Government on behalf of the Federal Republic of Nigeria; or the state Authority on behalf of the state in question, or the international body in question, and not in the person who is commissioned to do the work.

  1. Persons to whom copyright are assigned: 

Like other tangible rights, copyright can be transferred by assignment. Another way copyright is transmissible by section 10(1) is by testamentary disposition or operation of law. Testamentary disposition is bequeathing property at one’s death, e.g. through a will and operation of law, i.e. existing legal principles created by law for a party irrespective of such party’s intent. On the copyright owner’s death, the copyright devolves upon his representative he has bequeathed it on or his next of kin where he dies intestate.

Assignment works like a transfer of title or rights in a thing to some other person. An assignment may be a partial assignment, or not. In section 11(2) of the copyright act, an assignment or testamentary disposition of copyright may be limited to apply to only some of the acts which the copyright owner has the exclusive right to control, or to a part only of the period of the copyright, or a specified country or geographical area.

It means that a copyright owner can assign the right to do only individual acts to a person; in other cases, the copyright owner may limit the assignee’s exercise of such assigned rights to only a particular geographical area. So, A, a copyright owner can assign his work distribution rights to B in Lagos and Ibadan only.

The copyright act in section 11(3), provides that assignment must be in writing. Section 11 (5) provides that an assignment granted by one copyright owner shall affect as if granted by his co-owner. Also, by action 11(7), an assignment or testamentary disposition can be effectively granted or made regarding future work or an existing work in which copyright does not yet exist.

Copyright owners can assign their rights to a collecting society. The Copyright Act under Section 39 makes provision for collecting societies. Some of their functions are to monitor the use of the work of copyright owners. They also grant license based on pre-arranged fees and collect the fees on behalf of such rights owners. In the case of Musical Copyright Society (Nigeria)Ltd v Ade Okin Records &Anor (1992) F.H.C.L.R 313, only collecting society approved and registered by the National Copyright Commission can exercise the powers of a collecting society and can institute an action on behalf of its members.

  1. Persons granted license:

Sec 51 defines license to mean ‘a lawfully granted license permitting the doing of an act controlled by the act which would ordinarily be seen as an infringement.’ A license can either be exclusive or non-exclusive. While an exclusive license must be in writing, a non-exclusive license may be oral or inferred by conduct, as stated in section 11(3)&(4). The licensing agreement states the period which the license is stipulated for. Where a copyright owner grants a license to someone else, they have the right to do acts that would ordinarily be deemed infringing. So where A, who owns a copyright in work grants an exclusive license to B regarding the publishing of A’s work, B is conferred with every copyright owner’s right ordinarily belonging to B, Thus, B can preclude others from publishing A’s work and can even sue a person that contravenes such right now conferred on him.

The court in Adenuga v Ilesanmi (1991)5 N.W.L.R defined exclusive license as a license in writing signed by the owner or the person duly authorised by the owner in that behalf authorising the grantee to the exclusion of all other persons including the grantor, to exercise the right which by the Copyright Act 1970 would (apart from the license) be exercisable exclusive by the owner of the copyright.

Section 11 (5) provides that a license granted by one copyright owner shall affect as if granted by his co-owner. Also, by action 11(7), a license can be effectively granted or made regarding future work or an existing work in which copyright does not yet exist.

Differences between Assignment and Licensing

For an assignment, the copyright owner transfers all or some of the rights granted to him under the act. The person the rights are transferred to becomes the new copyright owner, while in the case of licensing the copyright owner retains ownership but authorises some acts to a third party.

Rights That Accrue with Owning A Copyright

These are the exclusive rights a copyright owner has concerning their works in Nigeria. The Copyright Act provides in section 6, the various rights for different categories of works. Copyright owners can do, preclude others from doing, and authorise the doing of any of the following acts as regards their work. Where anyone contravenes any of this right, it will amount to an infringement.

Some of these rights are discussed below.

  • Publication: The copyright owner gives a publishing license to whoever he wishes. Where some other person publishes the copyrighted work without permission, he will be guilty of copyright infringement. In Adenuga v Ilesanmi Press (1991) 5 NWLR 82, the Federal High Court held that where the respondents publish the work of the appellant without permission and sell same to the public, he will be guilty of copyright infringement except he can show he was granted a license to do so.
  • Production and Reproduction: This right cover calling the shots as to who produces the translation of the work or determining the reproduction of the original work in any material form and extends to the right to preclude any other person from reproducing the work or translation of the work.
  • Distribution: This right concerns the distribution of the work to the public for commercial purposes, by way of rental, lease, hire, a loan or similar arrangement. Any random person cannot decide to distribute copyrighted works to the public except with the copyright owner’s permission or authorisation.
  • Public Performance: It covers the exclusive right to perform or decide who can perform the work or its translation in public.
  • Translation and Adaptation: The right also extends to the translation of the work to other languages or the adaptation of the work. It means that permission has to be granted by the copyright owner before any of such work is made into an adaptation, else the erring party will be infringing upon the right conferred on the copyright owner by the Act.
  • Broadcast and Rebroadcast: The copyright owner have the exclusive right to control the broadcasting or the communication of a literary or musical work to the public by a loudspeaker or any other similar device. It also includes the right to control the broadcast of the whole or substantial part of a sound recording either in its original form or in any form recognisably derived from the original work to the public. It also extends to the rebroadcasting of the whole or a substantial part of a broadcast.

It is essential to know that copyright confers automatically on copyrightable works without the need to register it. It means that the law does not make it mandatory to register a copyright before it is recognised or enforced in society.

However, where one wants to go the extra mile to register, it could be concluded virtually or physically by submitting two copies of the work, completed registration form and payment evidence of the prescribed fee to a copyright commission office. The registration fee is N10,000. However, there are different fees for other transactions related to registration. The commission has 14 offices in the country with the head office located in Abuja. By registering your copyright, it serves as a notice to every one of the existence of copyright in such work.

Duration of Copyright

The first schedule of the Nigerian Copyright Act provides the period for which copyright exists before its expiration. The relevant duration is as follows:

  • For literary, musical or artistic works other than photographs, the copyright expires seventy years after the end of the year in which the author dies. In the case of a government or a body corporate, it expires seventy years after the end of the year when the work was first published.
  • In the case of cinematograph films and photographs, the copyright expires fifty years after the end of the year in which the work was first published.
  • For sound recordings, copyright expires fifty years after the end of the year in which the recording was first made.
  • For broadcasts, copyright ceases fifty years after the end of the year in which the broadcast first took place.
  • For pseudonymous or anonymous literary, artistic, or musical works, the copyright ceases seventy years after the end of the year when the work was first published. However, in a case when the author of the work becomes known, the relevant duration shall be calculated in reference to the regulation concerning the copyright of works in which their author is known. That is seventy years after the end of the year in which the author dies.
  • For literary, artistic, or musical works, created through joint authorship, the copyright expires seventy years after the end of the year in which the last author dies. For instance, if there are three authors, the date shall begin to count when the third and last author dies. Precisely, it begins to count when the work cannot be attributed to any living author.

There is no provision for renewal of copyright on expiration. The work goes to the public domain afterwards, and anyone is allowed to use it freely with no fee or fear of a lawsuit. In 2021, works by Gertrude ‘Ma’ Rainey, the mother of the blues, and F. Scott Fitzgerald’s book -The Great Gatsby entered public domain.

Jurisdiction

The Federal High Court is granted exclusive jurisdiction to try matters and disputes that arise under the Copyright Act under section 46. Section 251(1)(f) of the Nigeria Constitution also supports this position. Therefore, where Mr A’s work was reproduced by B without permission, the case must be initially instituted at the Federal High court and no other court.

Additionally, in the case of Panzani S.A v Nigeria Cereal Processing Company Limited & Anor (1993) FHCR 191, the court held that the copyright suit should be instituted in the place the infringement occurred. It means that if the copyright infringement occurred in Lagos, it would be wrong to institute the case in Kano Federal High Court.

This position is also supported by section 16(1) of the Copyright Act that provides that:

“Infringement of copyright shall be actionable at the suit of the owner, assignee, or an exclusive licensee of the copyright, in the Federal High Court exercising jurisdiction in the place where the infringement occurred.”

Furthermore, the plaintiff instituting the copyright case must have locus standi. Locus Standi means the legal capacity to initiate an action in the court of law. If the plaintiff has no locus standi, the case will be struck out by the court for lack of jurisdiction as held in Musical Copyright Society (Nig.) Ltd v Ade Okin Records and Anor (1997) FHCLR 313.

It is also important to state only persons stated in section 2(1) of the Copyright Act (citizen of Nigeria/ a person domiciled in a Nigeria or a company incorporated under the Nigerian law) can properly institute an action in court. The Federal High court lacks jurisdiction to adjudicate a copyright infringement case initiated by a foreigner or foreign company. The court held in Societe Bic S.A v Chagrin Industries Limited and Anor (1997) FHCLR 727 that it lacked jurisdiction because the plaintiff was a French company.

Copyright Infringement

Sec 15 of the Copyright Act states that copyright is infringed by any person who without license or authorisation of the owner of the copyright-

  1. Does, or cause any other person to do an act, the doing of which is controlled by copyright;
  2. Import or causes to be imported into Nigeria any copy of a work which, if it had been made in Nigeria, would be an infringing copy under this Act
  3. Exhibits in public any article in respect of which copyright is infringed
  4. Distributes by way of trade, offers for sale, hire or otherwise or any other prejudicial purpose to the copyright owner.
  5. Makes or has in possession plates, master tapes, machines, equipment or contrivances used to make infringed copies of the work.
  6. Permits a place of public entertainment or business to be used for a performance in the public of the work. The performance constitutes copyright infringement unless the person who allowed it was not aware or had no reasonable ground to suspect that the performance would be a copyright infringement.
  7. Performs or causes to be performed, for trade or business or as supporting facility to a trade or business, any work in which copyright subsists.

Where a copyright owner’s right has been infringed upon, sec 16(1) provides that he can enforce such right through a civil proceeding.

In Maurice Ukaoha v Broad-Based Mortgage Finance Ltd & Anor (1997) F.H.C.L 477, which involved the infringement of artistic work; the plaintiff lent out a 17-storey architectural model he made to the defendant to display temporarily in their conference room. After that, he travelled to Kano, and he saw his architectural model in the newspaper. The defendants had claimed that it emanated from Goni and Associates and that the model was their proposed headquarters in Abuja, all without the plaintiff’s permission. The court held ‘the defendants’ actions were all done without the consent, authorisation or licence of the plaintiff, the copyright owner. Thus, the defendants infringed the copyright of the plaintiff under the provisions of section 14(1)(a)(c) –exhibits in public any article in respect of which copyright is infringed; this they did by exhibiting the infringed architectural model in a newspaper.

Other Important Notes:

  • A master will be held liable for any copyright infringement committed by his employee in the course of his employment, and the law will not absolve him because he gave a general warning against the doing of infringing acts. It was the court’s decision in American Motion Picture Export Co. Nigeria Ltd v Minnesota (Nig) Ltd (1981) F.H.C.L 64
  • In an action for infringement of sound copyright, there must be direct evidence. Mere evidence of machines presence for the reproduction of cassette tapes of sound recording in the defendant’s office is not conclusive proof that the machine was reproducing any of the plaintiff’s tapes or record. The court held this decision in Island Records Ltd. & Ors v Pandum Technical Sales &services Ltd & Anor. 
  • There must be a copy amounting to the theft of the work created by an author or one who records or owns the record at the time of the recording.

Sec 20 of the Copyright provides for criminal liability. Thus, a copyright suit can be enforced through criminal proceedings.

Any person who:

  • Makes or causes to be made for sale, hire, or for trade or business an infringing copy of a work in which copyright subsists; or
  • Imports or causes to be imported into Nigeria any copy of a work which, if it had been made in Nigeria, would be an infringing copy; or
  • Makes causes to be made or has in possession plates, master tapes, machines, equipment or contrivances used to make infringed copies of the work.

is guilty of an offence under the Act and liable to conviction to a fine of an amount not exceeding N1000 for every copy dealt with in contravention of this section or to a term of imprisonment not exceeding five years, or to both imprisonment and fine. Unless he can prove to the court’s satisfaction that he did not know and had no reason to believe that any of the work’s copies was an infringing copy or the equipment were to make infringing copies.

Additionally, any person who-

  • Sells or lets for hire or the purpose of trade or business exposes or offers for sale or hires any infringing copy of any work in which copyright subsists; or
  • Distributes for trade or business any infringing copy of such work;
  • Has in his possession other than for his private or domestic use, any infringing copy of such work; or
  • Has in his possession, sells, lets for hire or distribution for trade or business, or exposes or offers for sale or hire any copy of a work which, if the work had been done in Nigeria, would be an infringing copy

is guilty of an offence under the Act and liable to conviction to a fine of an amount not exceeding N100 for every copy dealt with in contravention of this section or to a term of imprisonment not exceeding two years, or to both imprisonment and fine unless he can prove to the satisfaction of the court that he did not know and had no reason to believe that any of the copies of the work was an infringing copy.

Similarly, a person who without the consent of the owner distributes in public for commercial purposes, copies of a work in which copyright subsists by way of rental, lease, hire, a loan or similar arrangement shall be guilty of a criminal offence and on conviction will be liable to a fine of N100 for every copy or to a term of imprisonment for six months or to both such fine and imprisonment.

The Act also provides in section 38 of the Copyright Act for copyright inspectors. A copyright inspector can institute criminal proceedings against anyone found guilty of infringing a person’s copyright in any of the situations listed above. Section 38(2) provides some of their powers, and they include:

  • To enter and inspect at any reasonable time any building he suspects is being used for an infringement activity
  • To arrest any person, he reasonably believes to have committed an offence.
  • They also have all the powers, rights and privileges of a police officer as defined under the police Act and any other relevant enactment on the investigation, prosecution or defence of a civil or criminal matter under this Act.

Remedies for the Infringement of Copyright

A person who alleges that his or her copyright has been infringed upon can request for any of the following damages.

Damages 

They are different types of damages that the court grants as a remedy to a copyright owner in a case of copyright infringement.

  • General and Special Damages

The supreme court in Dumes (Nig.) Ltd v Ogboli (1973) 3 U.I.L.R 306, makes a difference in general and special damage, it was stated ‘it is axiomatic that special damages must be strictly proved and (unlike general damages, where if the plaintiff establishes in principle his legal entitlement to them, a trial judge must make his own assessment of the quantum of such general damages.’

Therefore, it means that special damages must be pleaded and proved to the satisfaction of the court, and it is based on the assessment of the pleading that the courts grants such damages. However, general damages need not be pleaded by the plaintiff; it is presumed by law and flows naturally from the wrongdoing, i.e., copyright infringement by the defendant.

  • Exemplary/Punitive Damages

Exemplary damages are to punish the defendant for his conduct and not compensate the plaintiff. It aims to deter the defendant and others from committing copyright infringement in the future. It is entirely at the discretion of the court to grant it. As laid down in the case of Masterpiece Investments Limited& Anor v Worldwide Business Media Limited & Ors (1997) F.H.C.L.R 496, it must not be excessive. It must be granted both judicially and judiciously in the interest of justice.

  • Nominal Damages

The court awards nominal damages in a suit for copyright infringement if the copyright owner shows that his right has been violated but cannot prove that he suffered any actual damage because of such violation or infringement. Additionally, it is granted where a plaintiff cannot establish the extent of the damage caused by the infringement, thereby making it impossible for the court to assess compensation properly.

Account of Profit 

By section 16(3) of the Copyright Act,

where the defendant claims and proves in action for copyright infringement that an infringement was committed, but at the time of the infringement he was unaware and had no reasonable grounds for suspecting that copyright subsists in work, the plaintiff will be entitled to an account of profits and not damages against the defendant’.

This was also reiterated in Plateau Publishing Company Ltd & Ors v Chief Chuks Adophy (1986) 4 N.W.L.R 205. The case also explains the remedy of an account of profit as a court order that takes from the wrongdoer all the profits he has made by his piracy or infringing act and gives them to the party who has been wronged as the nearest approximation it can be to justice.

Right of Conversion

Another remedy available to a copyright owner in the case of a copyright infringement is contained in Section 18 of the Copyright Act. It provides that:

’All infringing copies of any work in which copyright subsists, or of any substantial part thereof, and all plates, master tapes, machine, equipment or contrivances used, or intended to be used for the production of such infringing copies shall be deemed to be the property of the owner, assignee or exclusive licensee as the case may be, of the copyright, who accordingly may take proceeding for the recovery of the possession thereof or in respect of the conversion thereof.” 

This means where A’s copyright has been infringed upon by B, one of the remedies open to A is to collect infringing copies of the work and equipment used to reproduce infringing works from B and convert them to his own.

Injunction

An injunction is added as a remedy where damages are not enough. An injunction is a court order that compels a party to do or refrain from doing a particular act, usually wrongdoing. In the case of Yemitan V Daily times(1980)F.H.C.L.R 186, the court granted an injunction against the defendant to stop any further sale, use or dealing of the plaintiff’s work. By section 16(5) of the copyright act,

the court shall not issue an injunction in proceedings for infringement of copyright, requiring a completed or partly completed building to be demolished or prevents the completion of a partly completed building’.

Anton Piller Order

It is an order given ex parte (without prior notice to the other party) by the court to enable the copyright owner to inspect, photograph and seize infringing copies of works or materials in possession of the infringer. In the case of Musical Copyright Society Nig. Ltd (1996) F.H.C.L.R 473 court held that an Anton Piller must be judicially and judiciously granted in the interest of justice of both sides. Some of the factors the court consider before granting this remedy are:

  • Whether the plaintiff has acted on time to protect his interest
  • Whether damages will be adequate as a remedy
  • Whether it would cause undue hardship on the defendant
  • Whether there is full disclosure of all relevant fact by the plaintiff

The judge withdrew the Anton Piller order because the plaintiff did not reveal all relevant facts.

Exceptions to Exclusive Copyright Control

The second schedule provides a list of acts that do not fall under the ambit of control conferred on a copyright owner under section 6, some of which are listed below. The right conferred in respect of work by section 6 of this Act does not include the right to control-

  • Fair dealing: This covers research purposes, private use, criticism or review or reporting of current events provided that the title of the work and its author is acknowledged if used in public. Where the work is incidentally included in a broadcast acknowledgement is not needed.
  • The doing of the acts by way of parody, pastiche or caricature. This is a creative work designed to imitate, comment on, and make fun of its subject using the satiric or ironic imitation.
  • Artistic work is situated in public: The inclusion of an artistic work situated in a place the public can view it in a film or broadcast or the reproduction and distribution of copies of such artistic work is not under control.
  • Incidental Inclusion: Incidental inclusion occurs when part of one work is unintentionally included in another; it could come in the form of a fleeting or partial glimpse of such work. The Act exempts the incidental inclusion of artistic work in a film or a broadcast.
  • Collection of literary/musical work for educational use: The inclusion in a collection of literary or musical work which includes not more than two excerpts from the work, if the collection bears a statement that it is designed for educational use and includes an acknowledgement of the title and authorship of the work.
  • Educational Broadcast: the broadcasting of a work approved by the broadcasting authority as an educational broadcast.
  • Work used in an approved educational institution for an educational purpose: any use made of a work in an approved educational institution for the educational purposes of that institution provided that any reproduction made for such purposes will be destroyed before the end of the prescribed period, or before the end of 12months after it was made in the absence of a specified period.
  • Public recital of works for non-commercial purposes: the reading or recitation in public or in a broadcast by any person of any reasonable extract from a published literary working if accompanied by a sufficient acknowledgement; provided that such reading or recitation is not for commercial purposes.
  • News: news of the day publicly broadcast or publicly communicated by other means
  • Communication of a work to the public by a non-profit making club: the communication to the public of work, in a place where no admission fee is charged in respect of the communication, by any club whose aim is not profit-making.
  • Reproduction for the use of a public library: This covers making of not more than three copies of a book (pamphlet, sheet or music, map chart or plan) for the use of a public library under the direction of the person in charge of the library where such book is not available for sale in Nigeria.
  • Reproduction for research or private study: the reproduction for research or private study of an unpublished literary or musical work kept in a library, museum or other institutions to which the public has access.
  • Works made in promotion of blind & disabled persons welfare: The reproduction of published works in Braille for the exclusive use of the blind, and sound recordings made by institutions or other establishments approved by the government for the promotion of the welfare of other disabled persons for the exclusive use of such blind or disabled persons.

Defences to Copyright Infringement

The subheading above constitutes limitations to the exclusive right of a copyright owner. Noteworthy these limitations can act as defences to an action for copyright infringement. As such, a person who is charged or sued for copyright infringement can raise any of these applicable limitations to his situation as a defence.

Also, there’s the fair use doctrine that can be relied upon.

Fair Use under Copyright Law 

For a person to successfully rely on fair use defence in a suit for a copyright infringement, the court looks at four factors. They are:

  • The purpose of the use: The court seeks to look out for what the defendant used the work for, was it transformed to new work or was it merely a copy and paste of another person’s work. Was the work done for an educational purpose or research purpose, or did it add value to previous work? If it is not more than just a copy or does not serve a useful purpose, it does not satisfy this condition.
  • The nature of the copyrighted work: The scope for fair use is more stringent in unpublished work than a published work because the author has the exclusive right to control the first appearance of his or her work in public.
  • The portion of the work copied: There is a big chance that the lesser amount from another’s work one uses, the higher the chance of relying successfully on fair use. However, one is less likely to successful rely on fair use where the portion of the work used is a substantial part of the work that captures the central idea of the work whether or not it is very little. It, however, is not necessarily the rule in the case parody.
  • The effect of the use on the copyright owner’s income or economic gains: The court is unlikely to grant the fair use defence where the use of another’s work deprives the copyright owner of the adequate income or benefit from his or her work, So, where the person makes use of a copyright’s owners work or substantial part for a commercial purpose thereby causing depreciation in the sales of the work of the original copyright owner.

Definition

Section 67 of the Trademark Act defines Trademark to mean

‘except concerning a certification trademark, a mark used or proposed to be used with goods to indicate, or as to show, a connection in the course of trade between the goods, and some person having the right either as proprietor as a registered user to use the mark, whether with or without any indication of the identity of that person, and means, concerning a certification trademark, a mark registered or deemed to have been registered under the Act by section 43.’

It means that a trademark is a mark that indicates a connection between a good with the owner registered under the law to use such mark. Usually, once a person sees such a distinctive mark on a good, one can immediately identify the brand.

Therefore, trademark is a form of IP right that offers protection to phrases, symbols, and slogans registered in connection with a brand. It helps a consumer to identify a product or differentiate it from a counterfeit quickly. For example, ’a slightly bitten apple’ automatically brings Apple Inc. to mind, ‘A swoosh sign’ or ‘just do it’ makes one think of Nike.

A service mark is used to identify a service and not a product while a certification trademark is defined by Section 43 (1) as ‘a mark adopted with any goods to distinguish in the course of trade goods certified by any person regarding the origin, material, method of manufacture, quality, accuracy or other characteristics, from goods not so certified.’

Why is Trademark Important?

  • It prevents other people from using the same mark to sell their goods, thereby preventing unfair competition or allowing some other person adversely benefit from the goodwill of an already successful brand.
  • It helps consumers to distinguish the products they want from counterfeits that could deceive or confuse the public.
  • Additionally, the registered mark can represent or guarantee a maximum standard quality associated with such a brand.
  • It also confers on trademark owners’ recognition within their territory and sometimes even globally. For example, Apple’s logo is known worldwide.

The trademark register containing the registered trademark is divided into two parts called Part A and Part B.

Part A: 

Sec 9 of the Trademark Act provides certain necessary particulars that must be present for a trademark (other than a certification trademark) to be registered in part A of the register. They are:

  1. The name of a company, individual or firm represented in a special or particular manner
  2. The signature of the applicant for registration or some predecessor in his business;
  3. An invented word or words;
  4. A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or a surname;
  5. Any other distinctive mark

Provided that a name, signature or word or words other than such as fall within paragraphs (a) to (d) of this section, shall not be registerable under paragraph (e) of this section, except upon evidence of distinctiveness.

Thus, the distinctiveness condition must be satisfied before such a mark can be duly registered under this part as a trademark. A trademark or sign that is not distinctive makes it hard for a customer to distinguish the brand from another, thereby defeating a trademark’s purpose. Flowing from this, the trademark registrar will not register Apple as the trademark of a company that sells apple because it is descriptive and not distinctive.

However, Apple can be registered as a trademark for a company that sells gadget because it is distinct from what is being produced. Also, a generic term will not be registered as a trademark because it is too broad, e.g. a person selling soap cannot successfully register ‘soap’ as his trademark. Thus, the condition of distinctiveness is assessed with regards to the good the proposed trademark is for.

Other marks that can be considered as distinctive are-

  • Fanciful marks are words coined out of nowhere and have no exact meaning except with such goods. They are inherently distinctive, and the strongest kind of trademark, e.g. KODAK used with cameras.
  • Arbitrary marks: This category of marks is commonly used word that is used with goods that have no connection to its literal meaning. E.g., Apple, which is ordinarily a fruit, is used to identify and distinguish gadgets.
  • Suggestive marks: This kind of marks gives a form of a hint into a feature or quality which the product it is associated with has or provides. It does not describe the good out rightly; one still has to think before drawing a relation between the good or service provided and the name. E.g., crunchies for a chips brand.

Part B:

Section 10(1) of the Trademark Act, provides that

for a trademark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trademark is or may be connected in the course of trade from goods in the case of which no such connection exists, either generally or, where the trademark is registered or proposed to be registered subject to limitations, concerning use within the extent of registration.’

For marks to be registered in this section, all that is required is that it should be capable of distinguishing and becoming distinctive subsequently as a result of use. Where it becomes distinctive, the owner may then reregister it under Part A of the register.

Section 10(2) provides that’ in determining whether a trademark is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which-

  1. The trademark is inherently capable of distinguishing as aforesaid; and
  2. Because of using the trademark or any other circumstances, the trademark is so, in fact, capable of distinguishing as aforesaid.’

Therefore, it comes with no surprise that a descriptive mark may subsequently gain distinctiveness after long years of use instead of just describing the goods they represent.

Also, a trademark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trademark as provided in Sec 10(3) of the act.

Non-registerable Marks

Some categories of marks under the Act shall not be registerable as a trademark. They include:

  • Deceptive or Scandalous Mark

Sec 11 of the Act provides that

‘it shall be unlawful to register as a trademark or part of a trademark-Any matter the use of which would, because of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice or be contrary to law or immorality; or any scandalous mark.’

  • Names of Chemical Substances

The Act in section 12 gives restriction regarding the registration as Trademark regarding a chemical substance or preparation a word commonly used and accepted as the name of any single chemical element or single chemical compound. It will however not apply to a word, which is used to denote only a brand of such an element, or compound as made by the trademark owner as distinguished from the element or compound as made by others and in association with a suitable name or description open to the public use.

  • Identical and Resembling Trademarks

Except in cases of honest concurrent use, which the court or registrar approves, the Act in sec 13(1) provides that ‘no trademark shall be registered in respect of any goods or description of goods that is identical with a trademark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trademark as to be likely to deceive or cause confusion.’

Registration of a Trademark

The Trademark Act provides a centralised method of registering a trademark, unlike copyright. They include:

  • Preliminary Advice on Distinctiveness:

Under section 17 (1) of the Trademark Act,’ any person proposing to apply for the registration of their Trademark may if he so desires, apply to the registrar in the prescribed manner for advice as to whether the Trademark appears to the registrar prima facie to be inherently adapted to distinguish, or capable of distinguishing…’

  • Application for Registration:

The next step is to apply in writing to the registrar as provided in Sec 18(1). Sec 18(2) of the act provides that the registrar may refuse the application or may accept it absolutely or subject to some amendments, modifications, conditions or limitations, as he thinks right. 18(3) goes further to provide that in the case of an application for registration of a trademark (other than a certification trademark) in Part A of the register, the registrar may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B and deal with it accordingly.

Sec 18(4) states that where there is refusal or conditional acceptance by the registrar, the registrar shall, if required by the applicant, put in writing the grounds of his decision and the materials used by him in arriving there, and the decision shall be subject to appeal to the court.

On appeal, the court must hear both the applicant and the registrar and make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted. The court must hear the appeal on the ground stated by the registrar, and no other basis is to be brought up except with the leave of the court. If the court grants such request, the applicant will be entitled to withdraw his application without payment of costs.

Section 44 of the Trademark Act provides that where a person has applied for trademark protection in a convention country, he will be entitled to register his Trademark in priority to other applicants; and the registration will have the same date as the date of application in the convention country.

  • Publication of Notice of Application:

Where an application has been accepted unconditionally or not, the registrar will publish the notice of acceptance setting out the condition of approval in the journal as soon as possible after acceptance. However, the act provides a situation where register may cause notice to be published in the journal before approval.

  • Opposition to Registration:

Section 20(1) provides that any person may within two months from the date of any advertisement in the journal of an application to register a trademark and notice the registrar of opposition to the registration.

Afterwards, an appeal can be taken on the registrar’s decision concerning the opposed application. Where this is completed, then there comes registration proper.

  • Registration:

If the registration application has been accepted, neither was it opposed or opposed but decided to favour the applicant. The registrar gives a trademark certificate sealed with the registrar’s seal. In 22(4), suppose registration of a trademark is not completed within twelve months of application, because of default on the applicant’s part. In that case, the registrar gives notice of non-completion in writing; afterwards, he treats it as abandoned unless it is completed within the time specified in it.

Effect of Non-registration

By section 3 of the Trademark Act, the effect of non-registration of a trademark is that such person shall not be entitled to institute any proceeding to prevent or recover damages for, the infringement of such unregistered Trademark. However, it does not preclude such person from initiating a passing off suit against such erring party.

Duration and Renewal of Trademark

By section 23 of the Trademark Act, the duration of a trademark shall be for seven years. Still, one may renew for another fourteen years from the expiration date of the initial registration or the last renewal.

The Trademark Act provides a list of persons that can apply to register a trademark in Nigeria, and they are discussed below:

  1. Proprietors of Trademark

Sec 18(1) refers to registering a trademark by a person who claims to be a proprietor.

Any person claiming to be the proprietor of a trademark used or proposed to be used by him who is desirous of registering it must apply in writing to the Registrar in the prescribed manner for registration either in part A or part B of the register’.

  1. Joint Proprietor

Section 64 of the Trademark Act provides that ‘where the relations between two or more persons interested in a trademark are such that no one of them is entitled as between himself and the other or others of them to use it except-

  1. On behalf of both or all of them or
  2. In relation of an article with which both or all of them are connected in the course of the trade 

Those persons can apply to register the Trademark, and they will be registered as joints proprietors of the Trademark.’ 

This section applies to persons who cannot exercise ownership in a trademark independently because they hold joint ownership in such a trademark with other persons.

However, the Act will not register two or more persons who intend to use or use trademarks independently as joint proprietors.

  1. Corporate Bodies Not Yet Formed

Section 35(1)(a) provides that ‘no application for the registration of a trademark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the Trademark-

If the tribunal is satisfied that a body corporate is about to be constituted and that the applicant intends to assign the Trademark to the body corporate with a view to the use thereof concerning those goods by the body corporate.’

It means that the Act makes permissible the registration of a trademark for a company that is at the verge of incorporation. Thus, such a company can validly register a trademark in the country despite not being incorporated.

  1. Registered Users

Section 35(1)(b) provides that ‘no application for the registration of a trademark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the Trademark-

Suppose the application is accompanied by an application for registering a person as a registered user of the Trademark and the tribunal is satisfied. In that case, the proprietor intends it to be used by that person with those goods. The tribunal is also satisfied that the person will be registered as a registered user thereof immediately after registration of the Trademark.’

Section 34(1) provides the registration procedures, the proprietor and proposed user must apply in writing to the registrar.

  1. Persons assigned Trademark

The proprietor of a trademark can assign his Trademark under the Act.

Under section 26 of the Trademark Act it is provided that ‘notwithstanding any rule of law or equity to the contrary, a registered trademark shall after the commencement of the act, be assignable and transmissible either in connection with the goodwill of a business or not.’

By section 30(1), however, an assignee is to apply to the registrar to register his title after the assignment.

Some rights that accrue with being a proprietor of a trademark or a registered use of a registered trademark are explained below:

Exclusive Use of the Trademark:

Sec 5(1) of the Trademark Act, provides that ‘subject to the provisions of this section and of section 7 and 8 of the act, the registration (whether before or after the commencement of this act) of a person in Part A of the register as proprietor of a trademark (other certificate trademark) in respect of any goods, shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trademark in relation to those goods.’

It means that the act confers exclusive right to use the trademark with the goods it was registered for to a proprietor registered under Part A of the register. As such, the owner can affix this trademark on his goods and products exclusively. It also extends to using it for and during advertisement and using it on documents, letterheads etc. He can also preclude others from using the mark.

Right to Institute an Action:

Under the Trademark Act, only a registered trademark owner can rightfully institute a case for trademark infringement. Thus, registration grants the right to initiate action as it is a condition precedent. It means that where a proprietor of trademark finds out that some other person is carrying out acts that affect his exclusive use of his trademark, he has the right to take legal action. E.g., Mr A is repackaging drinks made by him in the bottle that B’s registered trademark is affixed on thereby passing it off as his. B can sue him for infringement.

Prima Facie Evidence of ValiditySection 49 of the Trademark Act, provides that ‘In all legal proceedings relating to registered trademark, the fact that a person is registered as proprietor of the trademark shall be prima facie evidence of the validity of the original registration of the trademark and all of subsequent assignment and transmission thereof.’

The effect of this is that by registering a trademark, the proprietor can easily assert his ownership in a dispute arising from trademark infringement by presenting his registration certificate as it serves as a prima facie evidence of ownership.

In the case of a registered user-

As opposed to a proprietor, in sec 33(5) a registered user of a trademark does not have the right to transfer or transmit the use of the trademark to another.

Additionally, section 33(4), provides that ‘subject to agreement between the registered user and the proprietor, the registered user can call the proprietor to take proceeding to prevent an infringement, and if the proprietor wilfully or negligently refuses to do so within two months, the registered user may institute proceedings for infringement in his own name as if he were the proprietor. making the proprietor a defendant.’ 

However, this is on the condition that if he adds the proprietor as a defendant, the proprietor shall not be liable for any cost unless the proprietor enters an appearance and takes part in the proceedings.

The Statutory Exception to the Exclusive Rights of a Trademark Owner 

  • Right of a person who is Bonafide using his own name etc

By section 8, the registration of a trademark shall not interfere with- any bona fide use by a person of his name or the name of his place of business, or of the name, or the name of the place of business, of any of his predecessors in business.

  • Right of a person who is bona fide using any description of the character of his goods

Section 8(b) the registration of a trademark shall not interfere with -the use of any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in section 5(2)(b) or 43(4)(b) of the act.

  • Limitations stated in the trademark register

The act, in section 5(3), provides that ‘the right to the use of a trademark given by such registration as aforesaid shall be subject to any conditions or limitations entered on the register, and the use of any such marks aforementioned in any circumstances to which, such restrictions are concerned, the registration does not extend, shall not constitute an infringement of that right’.

It means that if in the trademark register, the registrar does not state some acts to be a part of the rights a trademark owner’s privilege extends to, it does not amount to an infringement where a third party does it.

  • Right of persons who have their marks before the use or registration, whichever is the earlier of the registered Trade Mark

In section 7, the act provides that ‘Nothing in this Act shall entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods which that person or a predecessor in title of his has continuously used that trademark from a date previous to

  1. the use of the first-mentioned trade mark with those goods by the proprietor or a predecessor in title of his, or
  2. The registration of the first-mentioned trademark in respect of those goods in the name of the proprietor or a predecessor in title of his whichever first occurred or (where such use is proved) to object to that person being put on the register for that identical or nearly resembling trademark in respect of goods under sec 13(2) of the act.’

Thus, where a person or their predecessor has been using a trademark before the registration by another proprietor or registered user, he cannot restrain them from continuous usage. As the purpose of the section is to protect a trademark that has been in constant use before registering the new trademark but is identical with or nearly resembling that of the new proprietor or a registered user.

The court in American Cyanamid Company v Vitality Pharmaceutical Ltd (1991) 2 N.W.L.R 15 held that there must be no evidence of abandonment of continuous use by the person or the predecessor for the section to apply. Also, continued use of the trademark does not necessarily mean daily use.

  • The right conferred by concurrent registration:

In section 5(4) of the Trademark Act,’ the use of a registered trademark, being one or two or more registered trademarks that are identical or nearly resemble each other, in the exercise of the right to the use of that trademark given by such registration shall not constitute an infringement of the right to use of any other of those trademarks given by such registration.’

In Electro Technische Fabrik Schmit &Co. v Bateria Slany Narodni Podnic (1972) All N.L.R 143, both parties had a similar trademark, and the plaintiff wanted to restrict the defendants’ usage by removing the mark from the register. The Supreme Court held that the defendant had been using the mark for over six years now. So it will be unfair to have it removed now, particularly since the plaintiff never objected to their registration, thereby consenting to the defendant’s concurrent usage.

Jurisdiction

The Federal High court has the jurisdiction to try matters resulting from trademark infringement; however, such trademark must be a registered one. Where it is unregistered, the Federal High Court no longer has jurisdiction. However, it may be instituted as a case of passing off in the state high court given sec 272(1) of the 1999 constitution. It was the court’s decision Alhaji M.T Elebute and Anor. V Dr Olugbenga Ogunkua,(1990) F.H.C.L. 201 same as being reiterated and settled in the more recent case of Ayman Enterprises Limited v Akuma Industries limited &ors (2003) N.W.L.R. 22 

Trademark Infringement

Infringement by Section 5(2) of the Trademark Act occurs where ‘…any person who, not being the proprietor of the Trademark or a registered user thereof using it by way of the permitted use, uses a mark identical with it nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, concerning any goods in respect of which it is registered, and in such manner, as to render the use of the mark likely to be taken either-

  1. as being used as a trademark or
  2. in a case in which the use is used 

upon the goods or in physical relation to it or an advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as a registered user to use the Trademark or to goods with which such a person as aforesaid is connected in the course of the trade.’

Thus, most infringement cases arise from the use of a mark that closely resembles a registered proprietor or registered user’s mark by another person. In a case like this, using such a mark is likely to cause confusion or deceive the consumer and the society at large. In the case of Seven-Up Company &Anor. V Warri Bottling Company Limited (1984)F.H.C.L 183; Belgore J stated that in considering infringement, the following ought to be done:

  1. take the two words and examine them both by their look and their sound
  2. the goods to which they are to be applied must be considered
  3. the nature and kind of customers who would be likely to buy those goods must be considered
  4. all the surrounding circumstances of the case ought to be considered
  5. what is expected to happen if each of that Trademark is used in the usual way as a trademark for the goods of the respective owners of the marks ought to be considered

 Remedies

  • Damages

As explained under the copyright note, damages can be general, special, and nominal damages. The court reiterated in Beecham Group limited v Esdee Food product(Nig)Ltd (1980) F.H.C.L. 177 that ‘general damages is the type of damage the law will presume to be the direct ,natural or probable consequence of the act complained of.’

  • Injunction

There are different types of an injunction – An interlocutory injunction as defined in Dyktrade Limited v Omnia Nigeria Limited (2000)12 N.W.L.R. 1 is to protect a plaintiff against injury by violation of his right that he could not be adequately compensated in damages recoverable in the action if the court resolved the case in his favour at the trial.

The Court in Primrose Nigeria Limited v Mr Atul Singh &Anor (1998) F.H.C.L. 116 stated that the in a case of trademark infringement the first requirement to be satisfied in granting an injunction is that there must be an existence of a legal right as the court cannot grant an injunction in vacuo. Thus, in the absence of a legal right like the case stated above for the law to protect, no injunction will be granted by the court.

Also, in the case of Soul Publications Limited v Sweet Hearts Publication Ltd &Anor, the court made mention of some concerns concerning granting an interim injunction, and they include:

  1. It can be granted exparte.
  2. The judge is to exercise discretion in its grant and are not bound by former decisions else it will defeat the purpose of discretion.
  3. Only the non-disclosure of material fact can adversely affect the grant of an injunction. Thus, where non-material facts are not disclosed, it does not affect the judge’s grant of the injunction.
  4. Whether the applicant has a legal right, he seeks to protect.
  5. The real prospect of success at the trial notwithstanding the defendant’s technical defence
  6. Balance of convenience: this means that the judge is to assess the harm likely to be caused to the plaintiff if the injunction is not granted or harm to the defendant if imposed.
  7. Whether granting damages is adequate or not.

Also, where an applicant for an interlocutory injunction is in the same business with the defendant, and it is clear that the applicant was first in time in the industry, then the balance of convenience in granting the injunction must be on the side of the applicant to protect his long-established business.

  • Account of Profit

This remedy provides the plaintiff, the benefit of retrieving the profit on each infringing product sold.

  • Anton Piller Order

The court in Jay Laboratories (Nig)Ltd v James L Ayidu & ors, held that an Anton Piller order would only be granted in a case of extreme urgency where there is a risk of the defendant smuggling the infringing items away or destruction of vital evidence. Additionally, the applicant must be able to show that his or her trademark is registered.

In Ferodo Limited v Unibros stores (1999)2 N.W.L.R, the plaintiffs who were the sole distributor for Ferodo lining sought an Anton Piller order against the defendants who were selling their products despite not being their customer. The court granted the order.

  • Six persons including police were to enter the defendants’ premises for detention, preservation and inspection of any movable property that could constitute a breach of the injunction prayed for in the suit.
  • The defendants are to allow the plaintiff’s solicitor to all documents in their custody relating to the crux of the lawsuit and finally
  • The prohibition of a similar case of plaintiff’s infringement by the defendant.
  • Delivery Up

This remedy is to have the infringing goods delivered up and destroyed. In the case of Beecham Group Limited v Esdee Food Products Nigeria Limited has found that the defendant’s product ‘Glucos-aid’ drink infringed on the plaintiffs’ drink ‘Lucozade’; the court held that the defendants should deliver on oath for destruction all the goods, carton, wrapper, blocks, discs or stamps are bearing any mark that would be in breach of the court’s injunction.

Introduction

Definition

There is no centralised act governing trade secret in Nigeria, as opposed to what is obtainable for copyright – “the Copyright Act” – or trademark – ”Trademark Act”. Its protection is, however, referred to in some Acts.

The Unfair Competition Prevention Act of Japan defines a trade secret as any information relating to a production method, a sales method or any other information on technology or business unknown to the public.

According to WIPO, the trade secret covers technical and commercial information. Thus, it ranges from manufacturing or production processes, recipes, financial information, formula and advertising strategies that are unknown to the public but gives its owner or organisation a competitive edge over others. For example, KFC’s chicken remains famous and continuously sought after because of its recipe that is unknown to the public. You would not see another fried chicken taste precisely like it. The same benefit goes to Coca-Cola, there are thousands of cola drinks, but none taste like Coca-Cola, its secret formula has been kept for as long as 125 years.

Why Trade Secret?

Trade secrets as an IP right have certain advantages, and in many cases, it is compared to the protection under patents. The benefit trade secret have over patents are:

  1. It gives leeway for protection of a process or some procedure that do not satisfy patent protection conditions, e.g. a cooking process or recipe.
  2. The duration is long-lasting so far it does not get leaked or disclosed to the public instead of a patent that expires after 20 years and goes to the public.
  3. Protection is automatic as there are no additional formalities needed.
  4. It saves more cost because of the absence of registration.

Conditions

The Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) in Article 39 provides specific criteria to determine what constitutes a trade secret. They are:

  1. The information must be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question).
  2. It must have commercial value.
  3. It must have been subject to reasonable steps by the rightful holder of the information to keep it secret, e.g., through confidentiality agreement or marking a document as confidential.

Duration and Registration

The law does not require any additional formality of registration before a trade secret is protected under the law; its protection is automatic so far it passes the conditions and qualifies as a trade secret. The life span of a trade secret is indefinite except where it becomes known to the public because then it defeats the condition of secrecy.

Rights That Come with Owning A Trade Secret

  • Exclusive Use of the Trade Secret: As the name implies, trade secret protects confidential procedures exclusive to the company that owns and uses it. However, note that this exclusive right ceases to exist when the trade secret becomes known to the public.
  • Licensing: Licensing a trade secret is pretty difficult because it comes with certain risks to the confidentiality of the trade secret. Also, disputes may arise because the potential need to know the information beforehand – usually, to enable valuation – may affect its secrecy. This risk may, however, be cautioned by a confidentiality agreement.

Protection and Enforcement of Trade Secrets

Companies can protect a trade secret by informing only few people in the organisation about the information. For example, it could be known only to the top officials or as decided by the organisation. Additionally, employees usually sign a non-disclosure agreement upon employment. It helps the organisation prevent anyone from divulging the trade secret during the employment and even years after leaving such employment.

Also, such information can be encrypted or even kept in a safe lock changed routinely. Only when the law sees such information as confidential or qualified as a trade secret can there be a valid case for infringement. Where the court feels it does not qualify, then there would be no case to try.

A breach or infringement of trade secret occurs where a third party discloses or uses such information without authorisation or in a manner contrary to the use by its owner.

In Nigeria, Section 15 of the Freedom of Information Act

“(1) A public institution shall deny an application for information that contains – 

(a) trade secrets and commercial or financial information obtained from a person or business where such trade secrets or information are proprietary, privileged or confidential, or where disclosure of such trade secrets or information may cause harm to the interests of the third party provided that nothing contained in this subsection shall be construed as preventing a person or business from consenting to the disclosure; 

(b) information the disclosure of which could reasonably be expected to interfere with the contractual or other negotiations of a third party; and 

(c) proposal and bids for any contract, grants, or agreement, including information that would frustrate procurement or give an advantage to any person if it were disclosed. 

(2) A public institution shall, notwithstanding subsection (1), deny disclosure of a part of a record if that part contains the result or product of environmental testing carried out by or on behalf of a public institution.

 (3) Where the public institution discloses information, or a part thereof, that contains the results of a product or environmental testing, the institution shall at the same time as the information or part thereof is disclosed provide the applicant with a written explanation of the methods used in conducting the test. 

(4) A public institution shall disclose any information described in subsection (1) of this section if that disclosure would be in the public interest as it relates to public health, public safety or protection of the environment and, if the public interest in the disclosure clearly outweighs in importance any financial loss or gain to, or prejudice to, the competitive position of or interference with contractual or other negotiation of a third party.” 

This means that the Act gives protection to confidential information like trade secrets and commercial or financial information obtained from persons or businesses. As such, it cannot be publicly disclosed except in cases of public interest.

In some states where there is no legal framework for trade secrets, parties can rely on the contract agreed between parties to validly enforce their right in a case of breach or violation of the trade secrets as such party has contravened the provision of their contract. In India, for example, the law recognises breach of confidence in torts. In such cases, parties can rely on such to enforce their violated right.

Remedies

The court can grant a trade secret owner damages for the losses suffered; it could also be injunction in some other case or even the seizure and release of products made under unlawful access to the trade secret.

Defence                                                             

In a situation where a third party can show that they arrived at such trade secret independently without arriving at it from an unfair act or practise; for example, through reverse engineering (the reproduction of another manufacturer’s product following a detailed examination of its construction or composition) or Research & Development; such party shall not be liable for infringement or violation of trade secret and can validly use or reproduce such product.

Definition

It is the official name under which a company carries out business. It is used for advertisement purposes instead of the registered name which may be lengthier. It is also called a Doing Business As (DBA) Name. It differs from the legal name or registered name that appears on legal documents and government forms.

For example, Adams Chemical Manufacturers, Inc. may decide to use Adams Pharmaceutical as its trade name. Also, Kodak is the trade name for Eastman Kodak Company. McDonalds is the tradename for McDonalds Corporation, which is the legal name.

Protection

Article 8 of The Paris Convention provides that “trade name shall be protected in all the countries of the Union without the obligation of filing registration, whether or not it forms part of a trademark.”

By Article 10ter,

  1. ‘The countries of the Union undertake to assure to nationals of the other countries of the Union appropriate legal remedies effectively to repress all the acts referred to in Articles 9, 10, and 10bis.’
  2. ‘They undertake, further, to provide measures to permit federations and associations representing interested industrialists, producers, or merchants, provided that the existence of such federations and associations is not contrary to the laws of their countries, to take action in the courts or before the administrative authorities, with a view to the repression of the acts referred to in Articles 9, 10, and 10bis, in so far as the law of the country in which protection is claimed allows such action by federations and associations of that country.

Article 9 covers seizure, importation of goods unlawfully bearing a mark or trade name. 

Definition

According to the Paris Convention in Article 10bis (2), Unfair Competition is

any act of competition contrary to honest practices in industrial and commercial practices”.

Honest practices are usually determined by the country and the prevalent surrounding business methods. It is mostly characterised by the violation of trade secrets and maybe unrelated individual acts. For example, inducing a competitor’s clients through bribery or deception is classified as an unfair practice/competition.

Also, where a competitor forces or induces a former employee to divulge his previous employer’s trade secret to him. In such a case, we have a classic case of unfair competition.

Unfair practices can ruin a business’ reputation and make consumers lose confidence in the product of a business. In turn, it is expedient for businesses to avoid unfair competition. Even more, businesses must ensure that they are not victims as it can affect their profitability.

This is why laws protecting unfair competition has become necessary. Laws protecting against unfair competition are necessary because:

  1. It helps to promote innovation amongst manufacturers
  2. It protects businesses from being side-lined or affected adversely by the practice of an unfair competitor.
  3. It ensures adequate customer satisfaction within the economy
  4. Additionally, it enhances the market’s proper functioning by effectively managing the forces of demand and supply.

In Nigeria, the Federal Competition and Consumer Protection Act 2019 provides protection against unfair business practices of business. It also extends to the abuse of a company’s power in the market or acts that stifles competition in the economy.

Consequently, article 10bis of the Convention for the Protection of Industrial Property (Paris Convention), provides that member states are to provide adequate protection against unfair competition. Going forward, Article 10 (3) provides of unfair practices to include:

  1. All acts of such nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities of a competitor;
  2. Formulate false allegations in the course of the trade to discredit the establishment, the goods or the industrial or commercial activity of a competitor,
  3. Indications or allegations the use of which in the course of trade is liable to mislead the public on nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

Other Acts that may be classified as unfair competition stated by WIPO are:

  • Violation of Trade Secrets: This involves divulging vital information to members of the society or people outside the company. It also extends to the use of a company’s trade secret unlawfully for one’s personal business interest.
  • Freeriding: Taking undue advantage of another’s achievement to promote one’s business.
  • Comparative Advertising: This comes in two forms, either in a positive or negative referencing. The former is claiming one’s product is as good as that of the competitor, and the latter is claiming one’s good is better than that of the competitor.

By Article 10ter,

  1. ”The countries of the Union undertake to assure to nationals of the other countries of the Union appropriate legal remedies effectively to repress all the acts referred to in Articles 9, 10, and 10bis.”

Article 10bis covers unfair competition.

Also ‘They undertake, further, to provide measures to permit federations and associations representing interested industrialists, producers, or merchants, provided that the existence of such federations and associations is not contrary to the laws of their countries, to take action in the courts or before the administrative authorities, with a view to the repression of the acts referred to in Articles 9, 10, and 10bis, in so far as the law of the country in which protection is claimed allows such action by federations and associations of that country.’

Definition

According to Akintunde Eniola, restraint of trade is a practice where an employer and employee agree to restrict the employee’s right to engage in particular or specific types of business activities within a given area or locality and within a stipulated time. A restraint of trade can be operative in two forms

  1. During the course of employment
  2. After the departure from the employer’s work

Why Restraint of Trade?

  • It is a way employers ensure that employees who have left their business do not compete with the business when they leave.
  • It comes handy for circumstances where it is difficult to identify the confidential information that the employee may not use after the termination of their employment, as Lord Denning stated in Littlewoods v Harris.

Enforcement

Where it is Reasonable

Before the court can enforce a restraint of trade agreement, it must be a reasonable restraint. Three factors are usually considered- the geographical area covered, the length of the time involved, the scope of the activities covered. The length of time approvable is usually based on the type of business.

Now, when the geographical limit is not restrained; the court interprets it to mean the whole world, making it unenforceable because it is too wide and unreasonable. So, it is necessary to keep the restriction specific and to a particular area.

In Greer v Sketchleys Ltd1979 IRLR 445 a restriction covering the whole of UK was held to be too restrictive because the company only had branches in Midlands south of England.

There Is A Valid Interest to Protect

For instance, if the restraint is to protect a trade secret or confidential information, the court will enforce it because it happens to be a valid interest. In Lontaritis v Nigerian Textile Mills Ltd (1967) NCLR 114,123, Alexander J. stated

  • ”…the employer is entitled to protect himself against the disclosure or use by the servant, especially when he is employed in a confidential position of trade secrets, names of customers, and other information confidentially obtained; a reasonable restraint imposed for these purposes is valid, even if it has the effect of preventing to some extent the future completion of the servant.”

The Nature of the Employee’s Work and the Nature of the Business

This is another relevant factor the court looks at before a restraint of trade can be enforced. As such if the employee works in a high position or a position that could likely attract the clients or where he is more likely to have access to confidential information or trade secrets, then the court is likely to enforce the restraint as opposed to enforcing it in the case of a person in a lower rank like a cleaner or gatekeeper.

Importantly, the court will also not enforce a restraint of trade if it merely protects the employer from competitors or where it is restraint from a type of work that the employer was not involved in. e.g., where a clerk is restrained from working as a builder.

Also, restraint will not be enforceable in the instance of wrongful termination by the employer. In Briggs v Oakes 1990 1 CR 473, the restraint was not enforced by the court because the employment termination was before the agreed date.

In some cases, however, the court applies the blue pencil test that enables the court to severe the offending part of a restraint of trade agreement to make it enforceable. Thus, if a restraint of trade agreement has two or more parts, the court can cut off the unreasonable part as long as it does not significantly or fundamentally change the agreement as the court will not be involved in rewriting agreement of parties. However, if the court sees the agreement as one due to how intertwined they are thereby making inseparable, trade restraint will fail.

Burden of Proof

The burden is on the person seeking to enforce a restraint of trade agreement to show that such restraint is reasonable. The reasonability may, however, differ depending on the case at hand.

Definition

Section 12 of the Patents and Designs Act defines industrial design as

any combination of lines or colours or both, and any three- dimensional form, whether or not associated with colours, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain technical result.’

It also extends to ranges and dimensions invented by the author as held in Serg Aims Aluminium Products Limited v Stanley Akagba & Ors. (1994) F.H.C.S. 188.

Conditions to Be Satisfied for the Qualification of Industrial Design

Section 13(1)(a) and (b) provides that:

‘Subject to this section, an industrial design is registrable if-

  1. It is new, and it is not contrary to public order or morality. 

By section 13(3),

’an industrial design is not new if, before the date of the application for registration, it has been made available to the public anywhere and at any time by means of description, use or in any other way, unless it is shown to the satisfaction of the registrar that the creator of the design could not have known that it had been made so available.

In Sec 13(4),

an industrial design shall not be deemed to have been made available to the public solely by reason of the fact that within the period of six months preceding the filing of the application for registration the creator has exhibited it in an official recognised exhibition.’

13(5),

‘an industrial design is not new merely because it differs in minor or inessential ways from an earlier design or concerns a type of product other than the type with which an earlier design is concerned.’

It means that the newness of a design is characterised by the fact that it has not been shown to the public except in an exhibition six months before registration. It does not qualify as new only because it is not the same as another product in minor ways.

If a party denies another’s design’s newness, such a party is to prove such earlier existence; usually by tendering such design as evidence in court.

Duration and Renewal

By section 20(1) (a) and (b) of the Patent and Designs Act, on registration, industrial design protection is valid in the first instance for five years from the date of application. It is, however, subject to renewal for two more consecutive periods of five years. Thus, in total, the protection of an industrial design for fifteen years.

However, the renewal fee must be paid within 12 months immediately preceding the renewal period, as stated in section 20(2)(a) & (b). In turn, where this is not complied with, the Act gives a six-month grace after the beginning of the renewal period for such person to comply. Once the party makes the payment, the provision will be deemed to be complied with.

Who Can Validly Register an Industrial Design?

The law gives a category of persons the right to register an industrial design validly, and they are:

  1. The True Creator

The person who initially creates an industrial design has the right to register the industrial design, as long as he is the first to make an application for such registration. Under section 14(3)

‘if the essential elements of an application for the registration of an industrial design have been obtained by the purported applicant from the creation of another person without the consent of the other person both to the obtaining of those essential elements and to the filing of the application, all rights in the application all rights in the application and in any consequent registration shall be deemed to be transferred to that other person.’

It means that where a person who is not the true creator has all the essential elements for an industrial design application without consent, all rights in the application and any subsequent registration shall be transferred to the true creator.

  1. Statutory Creator

Section 14(1) provides that

‘…the right to registration of an industrial design shall be vested in the statutory      creator, that is to say, the person who, whether or not he is the true creator, is the first to file, or validly claim a foreign priority for, an application for registration of the design.’

Therefore, a statutory creator is the first person to apply to register an industrial design or claim a foreign priority validly. It does not matter whether he or she is the actual creator. However, by section 14(2) The Act, ‘the actual creator is entitled to be named in the registrar and the entitlement cannot be modified by contract.’

  1. Employer or Person Who Commissions Others to Create A Design

By section 14(4)

‘where an industrial design is created in the course of employment or in the execution of a contract for the performance of a specified work, the ownership of the design shall be vested in the employer or, as the case may be the person who commissioned the work. Where the creator is an employee then if his contract of employment does not require him to exercise any creative activity, but he has in creating the design used data or means that his work has put at his disposal-

  1. He shall be entitled to fair remuneration taking into account his salary and the importance of the design which he has created, and
  2. The entitlement in question is not modifiable by contract.
  3. Persons to Whom the Design Has Been Assigned

By section 24(1)

‘a person may assign his right to a registered industrial design. The right can also be transferred by succession or held in joint ownership’.

Section 24(2) provides that:

‘such an assignment must be in writing and duly executed by parties to be valid.’

By section 24(3)

‘the assignment shall be non-effective unless registered and the prescribed fees were paid for by the assignee.’

  1. Person to Whom A Contractual License Has Been Granted (Contractual Licensee)

 Under section 23 (1) (a) & (b) of the Act

‘a design owner may by a written contract signed by the parties grant a license to any person to exploit the design.’ The license grant shall make the licensee entitled to exercise all rights conferred upon the design’s registered owner.’

Under section 23 (2) (a)

“for the license to be effective, it must be registered, and the licensee must pay the prescribed fee.”

In section 23 (4) (a-c)

‘the licensee cannot assign the design or grant a further license to another person unless it is otherwise expressed or implied in the license granted. However, a design owner who is also the licensor may grant a further license to other persons or exploit the design himself unless otherwise prohibited by the contract.’

Jurisdiction

The Patent and Designs Act in section 26(1) vests jurisdiction to hear and dispose of legal proceedings emanating from the Act in the Federal High Court.

Rights Conferred by Owning an Industrial Design

Section 19 of the Act provides that registration of an industrial design confers upon the registered owner the right to preclude any other person from doing any of the following acts-

‘1. Reproducing the designs in the manufacture of a product;

  1. Importing, selling, or utilising for commercial purposes a product reproducing the design; and 
  1. Holding such a product to sell it or use it for commercial purposes.’

The reproduction remains illegal even where it differs only in minor or non –essential ways from the design and where the reproduction is regarding a product different from the type with which the design is concerned initially, as seen in section 19(2).  By section 19(2) (a) & (b), these rights only apply to acts done for commercial or industrial purposes; it does not apply where the action is done regarding a product incorporating a registered industrial design after the product has been lawfully sold in Nigeria.

Registration 

The registration process is in stages, and they are explained below:

  1. Application for Registration

By section 15 (1) of the Act, an application for registration of an industrial design must be made to the registrar, and it must contain the following:

  1. A request for registration of the design
  2. The applicant’s full name and address, where the address is not within Nigeria, an address for Nigeria’s service.
  3. A specimen if the design or a photographic or graphic representation of the design
  4. An indication of the kind of product for which the applicant wants to use the design.
  5. Such other matters as may be prescribed.

By 15(1)(b), the application shall be accompanied by:

  1. The prescribed fee
  2. A declaration by the true creator requesting he be named as such
  3. A signed power of attorney if an agent makes the application.

An application can be made ‘under sealed cover’ as provided under section 18, which means that an applicant may have the registrar keep the design a secret for a period not exceeding 12 months from the application date. In this case, the design will be held in a sealed package by the registrar and shall be opened after the time expires of where the applicant asks that the application be converted to an open one.

  1. Examination of Application

By section 16, after the application has been made by the one who seeks to register his or her industrial design; the registrar will examine such design to satisfy that it meets the eligibility requirement (newness, not contrary to public morality) for registration as provided by the Act and that the application conforms with the requirements in section 15.

  1. Registration and Publication

Under section 17, where the registrar is satisfied that every requirement has been complied with, the design will be registered, and a certificate of registration will be issued. The certificate should contain the number of the design in order of registration, the name and address of the registered owner, the date of the application, and date of the issue of the certificate, name, and address of the true creator where appropriate, etc. On registration of the design, the registrar will cause a notice to be published.

Nullity of An Industrial Design

As provided in section 22 of the Act, the court may declare null and void an industrial design if it does not satisfy the newness and not contrary to public morality condition or had been registered by someone who had no right to register.

The Statutory Exception to the Exclusive Rights

  1. The Product Has Been Lawfully Sold in Nigeria Before the Application for Registration

By section 19(2), the exclusiveness granted by the Act to a registered industrial design becomes invalid if the product has been lawfully sold in Nigeria preceding the registration date. In the case of Peter E. Venture (Nigeria)Limited V Gazasonner Ind. Limited & Anor (1998) 6 NWLR 619 CA, the court denied the appellant of the legal right of exclusiveness to the 275-lamp burner design because they had been importing from Hong Kong and selling the lamps to the public before applying for registration.

  1. Where the Design Has Been Made Available to the Public:

In addition, a party will be denied exclusiveness to an industrial design under the act where the design has been made available to the public.

Infringement

By section 25(1), the right of a design owner is infringed if another person without the design owner’s license does or causes the doing of any act that that other person is precluded from doing under section 19 of the Act.

Therefore, infringement occurs when a person carries out any of the acts in section 19 without the registered design owner’s authorisation, permission, or license.

For example, Mr A owns a registered industrial design for his product and Mr B reproduces such design to sell his product, he is said to have infringed on the right of Mr A, even in a case where there is a slight difference in the details, Mr B may still be declared as an infringer of A’s right. Therefore, where a party (the defendant) has made his design in a way meant to confuse and make the public believe that such product with the infringing design is that of the plaintiff, for example selling a cola drink in a bottle shaped like a Coca-Cola bottle.

In the case of Controlled Plastic Limited v Black Horse Plastics Industries Limited (1990) F.H.C1. 180 at pg. 199 gave a detail as to how the court may determine infringement:

  1. Small differences in detail do not necessarily prevent an infringement. However, there may be an infringement; if the two designs would not be confused if seen side by side, but there is a probability, it is mistaken if they are seen simultaneously.
  2. The test is not merely to look at the two designs side by side. The court should look at the designs together, but then consideration should be given to the effect of supposing; they were looked at a little distance off.
  3. The eyes must be the judge in such a case as this, and the court determines this question by placing the designs side by side and asking whether they are the same or whether the one is an obvious imitation of the other.
  4. The court has to decide whether the alleged infringement has the same shape or pattern must eliminate the question of the identity of function since another design may have parts fulfilling the same functions without being an infringement.

Also, in the case of Sunday Uzokwe v Densy Industries (Nig) Ltd & Anor (2002) M.J.S.C., 37

an infringement claim cannot be sustained solely because the infringing product is similar to that of the plaintiff because similarity of design has nothing to do with its novelty.’

As we advance in section 25(2),

an infringement of the rights of a design owner shall be actionable at the suit of the design owner in question…’.

Also, by section 25(4), a licensee can institute an infringement proceeding in his name only if the licensor unreasonably refuses or neglects to institute the proceeding after the licensee writes a letter to such licensor to institute such proceeding.

Remedies

In section 25(2) of the Act, it is provided that:

…and in any action for such infringement all such relief by way of damages, injunction, accounts or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of the infringement or other proprietary rights.

Some of these remedies available to a plaintiff in the case of the infringement of an industrial design are explained below:

Damages

In the case of Serg Aims Aluminium Products Limited v Stanley Akagba & Ors. (1994) F.H.C.S. 188, the court held that in a matter of infringement of a patent and design, the measure of damages is prima facie the entire value of the infringing articles.

Also, in Chanrai &Co (Nig) Limited v Khawan (1965) ALNR 189, the supreme, court held that:

‘damages must be awarded upon consideration of all the facts of the case and evidence led, and the measure of damage for injury of goodwill should be fair and temperate.

Injunction

Injunction and the conditions for its grant have been explained in previous notes. The court can grant an injunction where the infringing act is likely or about to happen or prohibit the defendant’s continuation of such infringing action.

In the case of Peter E Venture (Nigeria) Ltd v Gazasonner Industrial Limited & Anor (1998) 6 NWLR 619 CA, the Court of Appeal did not grant the interlocutory injunction pleaded by the appellants because the balance of convenience did not favour them.

Delivery-up

The court can order the infringing article or product that has the registered design delivered up for destruction. In Controlled Plastic Limited v Black Horse Plastics Industries Limited (1990) F.H.C1. 180 at pg. 199 ordered that the defendants under seven days deliver infringing articles for destruction.

Account for Profit

An account of profit is another remedy available to a plaintiff; with it, the plaintiff can rightfully get the defendant’s profits from such infringement.

Defences

Suppose the defendant proves to the court’s satisfaction that he was unaware that such industrial design was registered or made every necessary and reasonable step to confirm the design’s registration to no avail. In that case, the court may absolve him of such an infringement charge.

Also, on the expiration of the protection time frame for an industrial design and in any case where the statutory exception as provided in the Act takes effect, an individual would not be deemed to have infringed.

Definition

According to WIPO ‘a patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.’ Technical information about the invention must be disclosed to the public to get a patent.

Examples of patented invention include- Ladder gripping Attachment for shoes, which Edmond Dennis invented, was patented on April 15, 1913. It made it possible to stand on a ladder or other support even when the wearer’s body is inverted. The King of Pop, Michael Jackson, patented the shoe that enabled him to do his anti-gravity lean dance.

There are three main types of patent, and they include;

  1. Design Patent– According to USPTO patent law, a design patent is granted to any person who has invented any new and non-obvious ornamental design for an article of manufacture.
  2. Utility Patent– most sought-after patent covers new and useful processes or improvements to already existing useful processes.
  3. Plant Patent– for the protection of new plants that are distinct and borne out of asexual reproduction, i.e., not reproduced from seeds. There are other requirements for such a patent to be granted.

When will an invention be deemed patentable?

Section 1(1) of the patents and Design Act provides the condition under which a patent will be deemed patentable.

  1. ‘subject to this section an invention is patentable-
  2. If it is new, results from inventive activity, and is capable of industrial application; or
  1. If it constitutes an improvement upon a patented invention and also is new, results from inventive activity, and is capable of industrial application.’

On newness, that Act provides that-

‘An invention is new if it does not form part of state of the art’ (section 2a);

The art means art or field of knowledge to which an invention relates.

 ‘state of the art’ means everything concerning that art or field of knowledge which has been made available to the public anywhere and at any time whatever; by means of written or oral description, by use or in any other way before the date of the filing of the patent application relating to the invention or the foreign priority date validly claimed in respect thereof.

However, an invention shall not be deemed to have been made available to the public merely because of the fact that within the period of six months preceding the filing of a patent application in respect of the invention, the inventor or his successor in title has exhibited it in an official or officially recognized international exhibition.

  • Results from inventive activity: section 2(b) explains it to mean that ‘the invention does not obviously follow from the state of art, either as to the method, the application, the combination of methods, or the product which it concerns or as to the industrial result it produces.’
  • Capable of industrial application: section 2(c) explains it to mean ‘the invention can be manufactured or used in any industry, including agriculture.’

For the second condition on improvement upon a patented invention, it does not matter that the process already exists; it will be patented if it can be manufactured and can serve as a new improvement to the already existing patent. In James Oitomen v Grain Haulage and Transport Ltd (1998) F.H.C.L 236, the plaintiff was granted a patent for creating a harmless electric water boiler that could prevent fire accidents, an improvement to the imported ring boiler.

It should be noted, that The Act in section 1(5) excludes principles and discoveries of a scientific nature from being classified as inventions.

Registration/Application

It is provided for in rules 11-16 of the patent rules.

  • Application for a patent grant: The signed application for the patent grant by the applicant or his agent must be on form 1. An application for one invention shall consist of – a petition or request for a patent with the applicant’s full name and address, a specification, including a claim or claims in duplicate, plans, and drawings, if any, a Nigerian address for service, prescribed fee etc.
  • Specification: The complete specification must include a description of the relevant invention with any appropriate plans and also a claim or claims. Rule 12(1) provides that the description must disclose the relevant information in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates.’ Thus, the inventor owes the public a disclosure duty; thus, he should not withhold this information or give an inaccurate one.
  • The claim: a claim is a part of the specification that fulfils a separate and distinct function. It must be stated in the claims clearly and succinctly the invention that he intends to protect.
  • Examination of application: The registrar examines the application to see that it complies with the formal requirement provided for in Rule 11 of the patent rules, where it is not in line with the requirement, the registrar rejects the application if otherwise the patent will be granted.
  • Grant of the patent: The registrar issues to the applicant a document in form 4 that bears the relevant number, the name, and domicile of the patentee or his successor or assignee, if any, the dates of the patent and the grant, the title of the invention and period of validity among others.- Rule 15
  • Registration and publication: After the patent is granted, the registrar will enter the particulars of the grant in the register and cause it to be published in the Federal Gazette notification of the grant. This is provided in Rule 16(a-b), patent rules.

Rights conferred by registration

Section 6 of the act provides for a patentee’s right to register his or her patent.

  1. A patent confers upon the patentee the right to preclude any other person from doing any of the following acts-‘
    1. Where the patent has been granted for a product, the act of making, importing, selling, using the product, or stocking it for sale or use; and
    2. Where the patent is granted in respect of a process, the act of applying the process, or doing in respect of a product directly obtained from the process, any other acts mentioned in paragraph (a) of the subsection.’

By 6(2), the scope of the protection conferred by a patent shall be determined by the terms of the claims. In interpreting such claims, the description, plans, and drawings, if any, shall be used.

Under subsection 3, the rights under a patent-

  1. Shall extend only to acts done for industrial or commercial purposes; and
  2. Shall not extend to acts done in respect of a product covered by the patent after the product has been lawfully sold in Nigeria, except the patent makes provision for a special application of the product, in which case the special application shall continue to be reserved to the patentee notwithstanding this paragraph.

Therefore, this means that infringement of a patentee’s right can only occur where the infringer’s act involving such a registered patent is a commercial one. In addition, where a product embodies a patent and has been sold in Nigeria lawfully before applying for registration, the exclusive right no longer applies except when a special application for the product was provided.

Statutory Exceptions to the rights

  • Compulsory License

In the First Schedule, Part 1 Paragraph 1 (a-d) of the Patents and Designs Act, it is provided that

a person may apply to the court for the grant of a compulsory license at any time after the expiration of four years after the filing of a patent application or three years after the grant of a patent whichever period last expires, on one or more of the following grounds:-

  1. That the patented invention, being capable of being worked in Nigeria, has not been so worked.
  2. That the existing degree of working of the patented invention in Nigeria does not meet on reasonable terms the demand for the product
  3. That the working of the patent in Nigeria is hindered by the importation of the patented article and 
  4. That because the patentee refused to grant licenses on reasonable terms, the establishment or development of Nigeria’s industrial activities is unfairly and substantially prejudiced.’

In paragraph 2, the act states that

‘if an invention protected by a patent in Nigeria cannot be worked without infringing rights derived from a patent granted on an earlier application or benefitting from an earlier foreign priority, a compulsory license may be granted to the patentee of the latter patent to the extent necessary for the working of his invention if the invention

  1. Serves industrial purposes different from those served by the invention, which is the subject of the earlier patent or
  2. Constitutes substantial technical progress to that last mentioned invention.’

Going forward, paragraph 3 provides that ‘if the two inventions serve the same industrial purpose, the compulsory license will be granted on the condition that a compulsory license shall also be granted in respect of the later patent to the earlier patentee of the patent if he so requests.’

For better understanding, if Mr A owns a registered patent in Nigeria and cannot adequately fulfil his patent’s purpose without infringing on Mr B’s patent, the law allows him to apply for a compulsory license. Such compulsory license will be granted so far his patent, and Mr B’s patent does not serve the same industrial purpose. However, in a case where their patents serve the same industrial purpose, Mr A can only be granted a compulsory license by the court on the condition that Mr B is also granted a compulsory license to MR A’s patent where he requests for it.

Thus, a compulsory license is applied for and granted to fully harness the workings and importance of a patented invention where it is not fully explored in the country for some reasons.

Noteworthy, a compulsory license will not be granted as provided in Paragraph 5, unless the applicant-

‘Satisfies the court that he asked the patentee for a contractual license but has been unable to obtain such a license on 

  1. reasonable terms and within a reasonable time, and
  2. Offers guarantees satisfactory to the court to sufficiently work the relevant information to remedy the deficiencies that give rise to his application.’
  • Undertaking by a person other than the applicant

In section 6(4), ‘where at the date of the filing of a patent application in respect of a product or process or at the date of a foreign priority validly claimed in respect of the application, a person other than the applicant-

  1. was conducting an undertaking in Nigeria and
  1. In good faith and for the purposes of the undertaking was manufacturing the product or applying the process or had made serious preparations with a view to doing so.

Notwithstanding the grant of a patent, there shall exist a right (exercisable by the person for the time being conducting the undertaking) to continue the manufacture or application, or to continue and complete the preparations and thereafter undertake the manufacture or application, as the case may be, and in respect of any resulting products to do any other act mentioned in S.6 (1).’

  • Minister’s grant for public interest

In the first schedule, part 2, paragraph 15, the Act provides: ‘…where the minister is satisfied that it is in the public interest to do so, he may be authorize any person to purchase, make, exercise or vend any patented article or invention for the service of a government agency.’

Non-Patentable Inventions

The Act provides in section 1(4) (a-b) that patents will not be granted in the following cases:

  1. Plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and other products); or
  2. The publication or exploitation of the invention is contrary to public order or morality; it is not patentable. The exploitation of an invention here is not contrary to public order or morality merely because its exploitation is prohibited by law.’

Who can validly register a patent?

  1. Statutory Inventors

In section 2(1), ‘the right to a patent in respect of an invention is vested in the statutory inventor, that is to say, the person who whether or not he is the true inventor, is the first to file or validly claim a foreign priority for a patent application in respect of the invention.’ In 2(2), the true inventor is to be named in the registrar, and this entitlement is not adjustable by a contract.

  1. Persons who employ or commission other people to make an invention

Under section 2(4), ‘where an invention is made in the course of employment or in the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or as the case may be , in the person who commissioned the work.’

Provided that, where the creator is an employee then-

 (a)if-

  1. his contract of employment does not require him to exercise any inventive activity, but he has in making the invention used data or means that his work has put at his disposal; or
  2. the invention is of exceptional importance, he is entitled to fair remuneration, taking into account his salary and the importance of the invention, and
  3. The entitlement in question is not modifiable by contract and may be enforced by civil proceedings.
  1. Persons assigned an invention

A person’s right in a patent application may be assigned, transferred by succession, or held in joint ownership. Such an assignment must be in writing to be effective against third parties; and this was restated by the court in Arewa Textiles PLC and Ors. V Finetex limited (2003) 7 N.W.L.R 322. See section 24(1-3) of the patent and designs act.

  1. Persons granted a contractual license.

In section 23 (1) (a), ‘a patent owner may grant a license to anyone to exploit the relevant invention provided by the parties’ written contract. Furthermore, 23 (1)(b) provides that in the absence of a contrary provision in the agreement, the licensee shall be entitled to do with the patents any act provided for in section 6 anywhere in Nigeria.’

Also, for the license to be effective against third parties, Section 23 (2) (a) provides that the license must be registered, and the prescribed fees must have been paid. 

Additionally, unless expressly or impliedly allowed in the contract, a licensee cannot validly reassign the patent; however, a patentee may grant further licenses to other people except the contract forbids it.

Duration, Lapse, and Renewal

Section 7(1) provides that ‘subject to this act, a patent shall expire at the end of the twentieth year from the date of the filing of the relevant patent application.’ It means a patent expires after 20 years. A patent is also renewed annually by paying an annual fee where a patentee fails to pay; such patent protection shall lapse. By section 7(2), a patent shall lapse if the prescribed annual fees are not duly paid in respect of it: 

Provided that-

  1. A period of grace of six months shall be allowed for the payment of the fees; and
  1. If the fees and prescribed surcharge are paid within that period, the patent shall continue as if the dues had been duly paid.
  2. The expiration or lapse of a patent shall be registered and notified. 

 

Jurisdiction

By sect 26 (1) of the Patent and Design Act, the Federal high court is charged with the duty to dispose and hear legal proceedings emanating from the Act. 

 

Infringement     

By section 25(1), ‘the right of a patent owner is infringed if another person without the patent owner’s license does or causes any act that that other person is precluded from doing under section 6 of the act.’ It is essential to state that infringement only occurs with industrial or commercial activities. Therefore, infringement occurs when a person carries out any of the actions in section 6 without the registered patent owner’s authorisation, permission, or license.

As we advance in section 25(2), ‘an infringement of the rights of a patent owner shall be actionable at the suit of the patent owner in question…’

In Pfizer v Polyking Pharmaceutical Limited and Anor(1998)F.H.C.L, the court held that the defendant had infringed on the plaintiff’s patent by producing a capsule that contained the same organic compound that the plaintiff had exclusive right over, and this patent had not expired. It does not matter that they manufactured it using a different process because it still had the same effect or potency.

The court, in the case of James Oitomen v Grain Haulage and Transport Ltd (1998) F.H.C.L 236, held that in an infringement suit, for a plaintiff to succeed in an infringement claim, he had to show- ‘

  1. What he invented is patentable and has been registered
  2. That the defendant did an act, which constituted an infringement of the patented invention.
  3. That the defendant did the infringing act without consent or license
  4. The act of infringement has been covered by a valid claim of the plaintiff’s patent.

In addition, by section 25(4), a licensee can institute an infringement proceeding in his name only if the licensor unreasonably refuses or neglects to institute the proceeding after the licensee writes a letter to such licensor to institute such proceeding.

Remedies

Section 25(2) of the act provides ‘…and in any action for such infringement all such relief by way of damages, injunction, accounts or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of the infringement or other proprietary rights.

Some remedies available to a plaintiff in the case of the infringement of an industrial design are explained below:

  • Damages

It is the topmost remedy available to a plaintiff in the case of a patent infringement. In the case of Pfizer v Polyking Pharmaceutical Limited and Anor (1998) F.H.C.L, the court said the ‘measure of damages is the actual loss caused to the plaintiff.’ Damages can be general, special, or punitive.

  • Accounts for Profit

This remedy takes all the infringer’s profit from his infringing act and gives them to the plaintiff. Accounts of profit come as a handy relief. In James Oitomen v Grain Haulage and Transport Ltd (1998) F.H.C.L 236, the court ordered an account of profit made by the defendant since the plaintiff could not prove the ten million naira damages he was claiming.

  • Injunction

 The court also granted this remedy in James Oitomen v Grain Haulage and Transport Ltd (1998) F.H.C.L 236, where the defendant infringed on the plaintiff’s harmless electric water heater. The court granted an injunction forbidding them from further carrying out such infringing acts against the plaintiff’s patent through its servants, agents, or directors.

  • Delivery-up

The court can order the infringing article or product that has the registered patent delivered up for destruction. In James Oitomen v Grain Haulage and Transport Ltd (1998) F.H.C.L 236, the court ordered that the defendant deliver up the infringing articles he had in his custody or had control over for destruction.

Definition

According to WIPO, A geographical indication, also called (GI) ‘is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place.’

Article 22 of TRIPS, defines GIs as ‘indications which identify a good as originating in the territory of a member, or a region or a locality in that territory, where a given quality, reputation, or characteristic of the good is essentially attributable to its geographic origin.’ GI thus gives products an added benefit.

Thus, this form of protection is used for goods with distinct qualities based on their origins. For example, the famous Champagne (sparkling wine) originates from Champagne in France. Darjeeling tea is the first GI tagged product in India in 2004-2005.

Geographical Indication covers foodstuffs, wine, and spirits, industrial and agricultural products.

There is no specific act governing geographical Indication in Nigeria; however, there are semblances of products that can ordinarily be covered had there been a legal regime for it Nigeria. These examples of Geographical indications in Nigeria are Ogbomosho mangoes, Ijebu Garri, Abuja yam, among others.

 

Types of Geographical Indication

  1. Homonymous Geographical indications: these are geographical indications that are spelt or pronounced in the same way, but the products they identify are from different origins (countries). The registration of such a Geographical Indication may be refused. It is likely to be confused with another homonymous indication, thereby misleading consumers about the true origin of the product.
  2. Generic Geographical Indications: they perform the Indication of origin purpose every geographical Indication does. It has, however, evolved to be the standard term for such a product. An example is the term Camembert for cheese.

 

Why is Geographical Indication protection necessary?

  • Helps consumers distinguish between products with geographical origin based characteristic from the ones without it. Protects consumers from being deceived by persons who are not authorised to use the GI tag.
  • Promotes exportation of the goods with the GI tags, as they are renowned for their quality and standards.
  • Flowing from the preceding point yields profit to authorised and registered producers and gives them a competitive advantage.
  • Boosts the economy of the place the goods originate.

 

Registration/ Protection

A Geographical Indication can be protected via three main ways:

  1. Sui Generis Systems: in this case, legislation is enacted to address the GI system in such a country specifically. E.g., India has a sui generis law regarding GIs.
  2. Use of collective or certification marks: here, states use the trademark system or structure already in place, so the GIs are registered and protected as collective or certification marks.
  3. Using methods that focus on business practices, including administrative product approval schemes.

Geographical indication protection is territorial; however, one can take steps to protect it in other countries or places outside its originating place. It can be done in four ways-

  1. By obtaining protection directly in the concerned jurisdiction.
  2. Through the Madrid System for the international registration of marks, one can easily file a single application for protection where the GI is registered as a collective or certification mark.
  3. By taking advantage of bilateral agreements between countries.
  4. Through WIPO’s Lisbon System for the International Registration of Appellations of Origin. It can be achieved through a single registration called an ‘international registration’; the system allows protection for an appellation of origin already protected in one member state in all other members’ territories.

 

 

 

Duration and Renewal

Suppose a geographical indication is registered as a certification or collective mark. In that case, the protection is usually valid for ten years. However, it is registered under sui generis legislation most times. It stays valid until a person decides to cancel the registration.

 

Right Conferred By Geographical Indications

Persons with the right to use a geographical indication can preclude its use by persons whose goods fall short of the distinct quality and standard of a product that is due to its origin. Therefore, the GI tag controls and limits those who can validly use the registered product name to persons registered as authorised users or residing in the country, region, or place where such products originate.

Therefore, where the ‘Sumbawa honey’ Geographical Indication is protected, producers of the honey can exclude the use of the name for honey not produced or manufactured in the Island of Sumbawa (an Indonesian island, east of Bali). They can also preclude such a person from producing the honey, as it is not made according to the standards set out in the code of practice for the geographical Indication.

Suppose someone acts or causes to be done any act that possibly misleads the public to believe that their product satisfies the standard and quality of a product of a registered geographical indication or that it originates from such source whereas it does not. In that case, such a person is said to have infringed on the Geographical Indication of the authorised producers.

 

Limitation to the Right

A geographical indication tag holder’s right does not extend to preventing another person from making the product by using the same procedures as those set out in the Geographical Indication standards.

Introduction

With the introduction of intellectual property protection, indigenous people, local communities, and the government in developing countries began to seek traditional knowledge protection. Hence, the discussions for an international framework to effectively protect traditional knowledge, traditional expressions (folklore), and genetic resources began. Some countries have come up with their sui generis way of protecting traditional knowledge within their nations.

Definition

No definition can embody all that Traditional Knowledge means. However, WIPO has attempted to define it as a living body of knowledge that is developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity.’

Some examples of traditional knowledge

  • Thai traditional healers use plao-noi to treat ulcers
  • The San people use hoodia cactus to stave off hunger while out hunting
  • Sustainable irrigation is maintained through traditional water systems such as the aflaj in Oman and Yemen, and the qanat
  • in the Hudson Bay region Indigenous healers in the western Amazon use the Ayahuasca vine to prepare various medicines, imbued with sacred properties.

Why is it necessary to protect Traditional Knowledge?

  • It helps the government and communities where this traditional knowledge emanates from, exert control over how others use their traditional knowledge.
  • It is key to protecting this cultural or spiritual identity of communities from misappropriation.
  • It can be a pathway to socio-economic development to these communities and even attract tourists.
  • It creates an avenue for commercial utilization of their traditional knowledge, thereby enabling these communities to adequately and collectively benefit from traditional knowledge.

Classifications of Traditional Knowledge

The World Intellectual Property Organisation has classified the protection of traditional knowledge to cover three separate yet interconnected parts-

  1. Traditional knowledge in the strict sense (technical know-how, practices, skills, and innovations related to, say, biodiversity, agriculture or health);
  2. Traditional cultural expressions/expressions of folklore (cultural manifestations such as music, art, designs, symbols and performances); and
  3. Genetic resources (the genetic material of actual or potential value found in plants, animals and microorganisms).

 

Traces of protection of some of these traditional knowledge elements can be seen and are already incorporated in the modern IP system. For example, one can patent an invention derived using genetic resources (associated with traditional knowledge or not) or protected by plant breeders’ rights. The adaptation of folklore can be protected under copyright, so also is the performance of traditional or cultural music; the Beijing treaty can also protect the performer’s right.

The international IP community is making efforts to create a sui generis system to protect traditional knowledge. However, arguments for and against it by different states exist; there is no consensus yet on the need for this sui generis system due to its complexities. Panama and Peru already, however, have a sui generis in place for the protection of traditional knowledge in their countries.

Introduction

Protection of plant variety evolved due to the need to protect and recognise the breeders of new plant varieties by giving them exclusive rights over their plant production for a limited period.

The International Union for the Protection of New Varieties of Plants (UPOV) / Union Internationale Pour la protection des obtentions végétales (UPOV) is a sui generis intergovernmental organisation overseeing the administration and protection of new plant varieties as an IP right. The UPOV Convention was adopted in Paris in 1961. There is an international legal instrument governing the regime of new plant varieties called the International Convention for the Protection of New Varieties of Plant. There are currently 74 member states to the convention; Nigeria is not a member of this convention.

Definition

Plant Variety Rights (PVR) is an IP right that gives breeders of a new plant variety exclusive control of production, reproduction, sale, export, or import over their propagating and harvested materials like the seed, cutting, and fruit, among others concerning his plant variety. This exclusive control usually lasts for 20/25 years.

It is necessary to protect plant varieties because-

  • By creating a system of protection for plant breeders, it encourages more development and production amongst them.
  • It encourages healthy competition among breeders.
  • It also enables them to make adequate profit and recover the cost of their plant development.
  • Ensures there is the continuous availability of these new plant varieties.

 Protection and Enforcement

A plant variety can be protected through three systems as provided by TRIPS;

  1. Through the patent mechanism
  2. Through a unique (“sui generis”) system related to plants – Where these new plant varieties do not satisfy the non-obvious process condition needed to qualify for a patent, a country’s sui generis system of protection gives leeway for protection.
  • Alternatively, through a combination of both, i.e., patent mechanism and a sui generis plant variety system.

Conditions for granting a plant variety right

The 1991 UPOV Act provides in Article 5(1) that for a breeder’s right to be granted, certain conditions must be satisfied:

‘The breeder’s right shall be granted where the variety is –

  1. New
  2. Distinct –It is stated in Article 7 thatthe variety shall be deemed distinct ‘if it is distinguishable in a clear way from any other variety whose existence is a matter of common knowledge at the time of the filing of the application.’
  • Uniform – The act explains in Article 8 that forthe variety to satisfy uniformity, it means, ‘subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics.’ 
  1. Stable – The act explains in Article 9 that for  the variety to satisfy stability, it means ‘the variety’s relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle.’ 

5(2) provides an additional condition that –

The breeder’s right shall be granted without additional or different conditions, provided that a denomination designates the variety following the provisions of Article 20, that the applicant complies with the formalities provided for by the law of the Contracting Party with whose authority the application has been filed and that he pays the required fees.’

Therefore, apart from the four conditions in subsection 1, an applicant must also pay the required dues and comply with the formalities of the contracting state’s law to be granted the plant variety right in such territory.

On newness, the act provides in Article 6 that-

‘(1) The variety is considered new if, at the application date for a breeder’s right, propagating or harvested material of the variety has not been sold or disposed of to others, with the breeder’s consent, for purposes of exploitation

  1. in the territory of the Contracting Party in which the application has been filed earlier than one year before that date and 
  2. in a territory other than that of the Contracting Party in which the application has been filed earlier than four years or, in the case of trees or of vines, earlier than six years before the said date.’

It, therefore, means that if the applicant wants to register his plant variety in Brazil. This country is part of the convention; he must not have sold such plant variety in Brazil for more than a year before his application date. In the case that it is a territory that is not a party to the convention like Nigeria, to validly apply for registration, he must not have sold such plant variety beyond four years therein and in the case of trees or vines, six years before the application date.

Duration

Article 19(2) provides a minimum period for protection. It states, ‘The said period shall not be shorter than 20 years from the date of the grant of the breeder’s right. For trees and vines, the said period shall not be shorter than 25 years from the said date.’

The extent of a breeder’s right

A breeder’s right is provided for in Article 14. It covers exclusive acts regarding the propagating material, acts in respect of the harvested material, essentially derived varieties and certain other varieties, and some other acts that contracting parties may specify.

A person is said to have infringed on a breeder’s rights where he carries out any of the acts exclusive to a breeder in relation to his plant varieties without consent, authorisation or permission, except where the state or act makes for such exception.

  • Acts in respect of propagating material

Article 14(1) provides-

‘(a) Subject to Articles 15 and 16, the following acts in respect of the propagating material of the protected variety shall require the authorisation of the breeder:

  1. production or reproduction (multiplication)
  2. conditioning for propagation
  • offering for sale
  1. selling or other marketing
  2. exporting
  3. importing
  • stocking for any of the purposes mentioned in (i) to (vi) above. 

(b) The breeder may make his authorisation subject to conditions and limitations. 

  • Acts in respect of harvested material

Article 14(2) provides-

‘Subject to Articles 15 and 16, the acts referred to in items (i) to (vii) of paragraph (1) (a) in respect of harvested material shall require the authorisation of the breeder. It includes entire plants and parts of plants obtained through the unauthorised use of propagating material of the protected variety unless the breeder has had a reasonable opportunity to exercise his right concerning the said propagating material.  

  • Acts in respect of other products

Article 14(3) provides-

‘States may provide, subject to Articles 15 and 16, the acts referred to in items (i) to (vii) of paragraph (1) (a) in respect of products made directly from harvested material of the protected variety falling within the provisions of paragraph (2) through the unauthorised use of the said harvested material shall require the authorisation of the breeder, unless the breeder has had a reasonable opportunity to exercise his right concerning the said harvested material.’ 

  • Possible other acts as may be defined by the state party

Article 14(4) provides-

‘ Each Contracting Party may provide that, subject to Articles 15 and 16, acts other than those referred to in items (i) to (vii) of paragraph (1)(a) shall also require the authorisation of the breeder. 

  • Acts in respect of essentially derived varieties and certain other varieties

By Article 14(5) (a)-

 ‘The provisions of paragraphs (1) to (4) shall also apply concerning 

  1. Varieties, which are essentially, derived from the protected variety, where the protected variety is not itself an essentially derived variety.
  2. Varieties that are not clearly distinguishable per Article 7 from the protected variety and
  • Varieties whose production requires the repeated use of the protected variety.

Further, 14(5) (b) explains what an ‘essentially derived variety’ is as different from the ‘initial variety’.

To qualify as an essentially derived variety –

  1. It has to be predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety.
  2. It is distinguishable from the initial variety and 
  • It conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety, except for differences that arise from the act of derivation.

 As provided in 14 (5) (c), essentially derived varieties may be obtained-

  • By selecting a natural or induced mutant, or of a soma clonal variant, the selection of a variant individual from plants of the initial variety, backcrossing, or transformation by genetic engineering.’

Limitations

Article 15 of the UPOV Act provides some compulsory exceptions to the exercise of a breeder’s right.

The breeder’s right shall not extend to –

  1. acts that are done privately and for non-commercial purposes
  2. acts done for experimental purposes and
  3. Acts that are done to breed other varieties, and, except where the provisions of Article 14(5) apply, acts referred to in Article 14(1) to (4) in respect of such other varieties. This means that this exception comes in cases of essentially derived and certain other varieties, which may not be exploited without the authorisation of the breeder of the original variety.

However, the act provides an optional exception that many countries have taken up to limit the breeder’s rights and give farmers’ privilege to keep farm-saved seeds.

By article 15(2)-

‘states may, restrict the breeder’s right to any variety within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder in order to permit farmers to use for propagating purposes , on their holdings, the product of the harvest which they have obtained by planting, on their holdings, the protected variety.’