The IP Bulletin is a platform designed to create awareness of intellectual property law and its practical application in Nigeria. Indeed, it is no longer news that the recognition of intellectual property (IP) has gained traction in most countries of the world, including Nigeria. As a result, the demand for their protection is growing, and reasonable steps have been taken to ensure the same. When we mention protection, the various IP laws come to mind. However, as the saying goes, you can lead a horse to a stream but not force it to drink water. No matter how creators, innovators, or inventors are encouraged to protect their rights, they are the ones that must take the step of filing for their registration, hence their protection. The present article seeks to analyse why they must take such a step.
Protection of Intellectual Property in Nigeria
In Nigeria, the law recognises only copyrights & related rights, trademarks, patents, and industrial designs as IP rights. For most of them, adequate protection can only arise when you file for registration in the relevant office, like the Trademarks, Patents, and Designs Registry.
Registration usually takes time and money and involves a long and tedious process. As a result, for a person or an enterprise to go through registration hurdles, they must have compelling reasons to do so. No matter how “registration affords protection” is sung like a song, we must answer the details of why IP should be filed. I will answer the question under the three subheadings below.
- Rights for registered IP proprietors.
- Advantages of registering your IP.
- Disadvantages of unregistered IP.
Rights for registered IP proprietors
Trademarks: While several countries of the world have adopted nontraditional meanings of trademarks, Nigeria is yet to catch up with the rest of the world[i]. Hence, displaying her contentment with the traditional connotation of a trademark.
A trademark entails any mark used or proposed to be used in relation to goods to show the connection in trade between the goods and the person that is using it.[ii] A mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.[iii]
The Act mandates owners to register their marks.[iv] Apparently, this is why registered marks are prioritised. In other words, most rights, as enumerated below, are restricted to registered marks.
- The exclusive right to use a mark: A right holder can use a mark in commerce to the exclusion of others, and where another wrongfully uses it without permission or authorisation, it can attract damages or other remedies against the infringer. Where a brand puts in substantial efforts in it delivering good products or services, this can promote its name, building a good reputation. Exclusively using such a name can increase its growth and protect its market share.
- Right to license: A registered trademark can be assigned [v] and licensed [vi] to a third party. Assignment or licensing can have various benefits, like profit-making, especially for well-known brands. Brands like Jack Daniel’s are known to make a profit from their licensing their corporate trademarks.[vii] Furthermore, over 20% of Angry Bird’s revenue comes from licencing.[viii] Asides from profit-making, it can increase its recognition and make for a swift entry into foreign markets.[ix] Eventually, there will be the growth of your business & increase market value.
- Right to sue for trademark infringement: Only a registered owner is empowered to institute a trademark infringement proceeding. In Seven-Up and Anor. v. Warri Bottling Company Ltd [x], the FHC upheld a trademark infringement case for the use of the plaintiff’s registered trademark.
Patents: Inventions are eligible to be registered and protected as a patent once they have satisfied certain requirements, like novelty[xi]. A patent can be conferred for a product or process.
Unregistered inventions are not even considered under the Act, as all the rights, as enumerated below, vests on the patentee.
- A patentee of a product patent has the right to exclude others from making, importing, selling, using, or stocking it to sale or use.[xii]
- A patentee of a process patent is empowered to exclude others from applying the process or any other acts mentioned in paragraph (a).[xiii]
- Only a patentee can grant a license.[xiv] The explanation under licencencing of a trademark applies here.
Industrial designs: Industrial designs are any combination of lines, colours or both, and any three-dimensional form, whether or not associated with colours and is intended by the creator to be used as a model or pattern to be multiplied by an industrial process and is not intended solely to obtain a technical result.[xv]
Registered owners of industrial designs have diverse rights,[xvi] which includes:
- The right to exclude others from reproducing it, importing, selling, utilising a product reproducing the design, or holding a product to sell it or gaining commercially from it.
- The right to grant a license.[xvii] The explanation under licencing of a trademark applies here.
Copyright: Unlike other Intellectual properties, you do not need to file for registration before your work can be protected under copyright. The Nigerian Copyright Act automatically confers diverse rights on authors once the two requirements of creation and fixation are met. Such rights include:
- The exclusive power to use, reproduce, publish, perform, distribute, or make an adaptation of an expression of art.[xviii]
- The right holder can (or by operation of the law) assign such rights to another.[xix]
Hence, registration is merely voluntary and only serves as a notification of ownership to the public.
Advantages of filing your Intellectual Property
- Public knowledge: Registration serves as notice to ownership, and this can serve as a deterrent to potential infringers. Those who know that you have registered your work may desist from infringing on it because they will believe you will take reasonable steps to ensure they pay for it. Furthermore, this knowledge can make it easier for people to identify works and their authors or right holders to get a license or authorisation to use such work.[xx]
- Security for a loan: Upon registration of an expression of art, a certificate of registration is issued, which serves as a title document proving ownership. Considering that the Act allows for the dealing of copyright as a movable property[xxi], it could serve as a security for the loan. Such a loan can be used to improve businesses by expanding it or purchasing necessary equipment, etc.[xxii]
- Presumption of ownership: Even in the world of up-to-date laws and strict enforcement, copyrights infringement is bound to occur. Upon the suit of an alleged infringer, an issue to be determined would be who the copyright owner is. A bonafide owner who tenders a registration certificate is often declared the owner upon tendering it.
Trademarks, Industrial Designs, and Patents
- Presumption of ownership: The document or certificate of registration of the above is prima facie proof of ownership. As a result, upon a suit of infringement, a proprietor will not experience difficulty proving ownership.
- Attraction of investors: In today’s world, investors want to cover their backs, and they cannot intentionally jump without looking. Considering that IP is a financial and legal asset of a brand, Investors often require its protection. A brand that has solid IP protection will be at an advantage for investments. An investor once wrote, “Investors like to see that entrepreneurs have integrated Intellectual Property rights into their business plans.”[xxiii] As a Nigerian startup or SME, you must consider IP protection, especially where you are targeting foreign investors. This is important because investors will believe you are serious, and it will give you a competitive advantage.[xxiv] In other words, the higher a company’s IP portfolio, the higher it can attract investors.
- Prevention of wrongful use: Protecting your designs, inventions, or trademark is a way to warn people not to use them.[xxv] They will know that if they go on with infringing on either of them, an array of remedies can be entered in your favor and against them.
- Distinguish you from your competitor: A brand that is known for investing in protecting its intellectual property will stand out from competitors. Apple, one of the IP intensive companies in the world, is among the most valuable companies. Indeed, companies with large IP portfolios are generally regarded to have a lot to offer. If the public sees a company in this light, then such a company is at an advantage than its competitors.
Disadvantages of an unregistered Intellectual Property
- Limited or no protection: For trademarks, Nigeria operates a two-tiered system of protection–both registered and unregistered are protected. However, the protection accorded to the owner of an unregistered mark is limited. Upon infringement of the mark, such an owner cannot sue for trademark infringement but only for the tort of passing off.[xxvi] Even if such an action was successful, it cannot confer exclusive right to use the mark as a registered trademark.[xxvii] It can only be enforced in the state or area where such an owner is operating. In Niger Chemist v. Nigerian Chemist[xxviii], some of the basis of the court’s decision was on the use of similar marks in the same town, street, and line of business. Protection for patent and industrial designs only arises upon registration, so even when your IP is truly infringed on, there will be no remedy.
- Difficulty in proving ownership: Unlike in a trademark infringement action, where a right holder only needs to tender a certificate of registration to prove ownership, in a passing-off action, the plaintiff must prove notoriety and distinctiveness. As a matter of principle, despite the sound argument a counsel may give, it is based on the discretion of the court to determine what is notorious or distinctive.
- Risk of infringement: Even if people are aware that you own an IP, if you do not protect it, they may assume you care little about infringement.
- Loss of income: As much as people might infringe on your rights even when you registered it, they may not have the boldness to challenge you in court if you institute an IP infringement matter. However, where it is unregistered, you may have to spend millions of legal fees to prove your case or defend an action against you.
- Prerequisites for initiating claims: Unregistered owners cannot institute a trademark infringement action. In Dyktrade Ltd. v Omnia (Nig) Ltd,[xxix] the Supreme Court held that an unregistered trademark proprietor could not maintain an action in trademark infringement.
Conclusion: The need for the filing for the protection of intellectual property by a proprietor cannot be overemphasised. Failure to do so can strip an owner of all the rights and benefits that should ordinarily accrue to such an owner under the relevant laws. Also, it can have negative effects on the owner. As a result, adequate efforts must be taken to invest in the protection of a brand’s IP. This ensures that such a brand reaps the short-term and long-term benefits of such investment. Like Sango, Jendayi said, “guard your intellect like the most valuable property you own.”[xxx]
[i] https://www.google.com/url?sa=t&source=web&rct=j&url=https://www.banwo ighodalo.com/assets/resources/d97c515ffb60c25aca27cbef2d427887.pdf&ved=2ahUKEwjcm7z hsD2AhWIyYUKHbsWAFsQFnoECAQQBg&usg=AOvVaw1eQad1bfAHupk95K8mKFmt
[ii] Section 67 Trademarks Act, Chapter T13 Laws of the Federation of Nigeria 2004 (the “Trademarks Act”).
[iii] Section 67 Trademarks Act, Chapter T13 Laws of the Federation of Nigeria 2004 (the “Trademarks Act”).
[iv] Section 4 Trademarks Act, Chapter T13 Laws of the Federation of Nigeria 2004 (the “Trademarks Act”).
[v] Section 26(1) Trademarks Act, Chapter T13 Laws of the Federation of Nigeria 2004 (the “Trademarks Act”).
[vi] Section 33 Trademarks Act, Chapter T13 Laws of the Federation of Nigeria 2004 (the “Trademarks Act”).
[x] (1984) F.H.C.L.R 183
[xi] 1 The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xii] 6(1)(a) The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xiii] 6(1)(b) The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xiv] 23(1)(a) The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xv] 12 The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xvi] 9 The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xvii] 23(1)(a) The Patents and Designs Act, Chapter P2 Laws of the Federation of Nigeria 2004 (the ‘Patents and Designs Act”)
[xviii] Section 5 Copyright Act, Chapter C28 Laws of the Federation of Nigeria 2004 (the “Copyright Act”).
[xix] Section 10 Copyright Act, Chapter C28 Laws of the Federation of Nigeria 2004 (the “Copyright Act”).
[xxvi] 3 Trademarks Act, Chapter T13 Laws of the Federation of Nigeria 2004 (the “Trademarks Act”).
[xxviii] (1961) JELR 87053 (HC)
[xxix] (2000) 12 NWLR pt. 680 pt 1,
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.