1. INTRODUCTION
The Intellectual Property (IP) regime in Nigeria emanated from the English common law and the doctrine of Equity of the late 19th century and is fast maturing into a great earner of foreign investments in Nigeria. This progression is aided by the desires and efforts of the government and the other players in the sector to attain an enviable and investment-friendly jurisdiction. Nigeria, no doubt, is the next emerging destination after China for Foreign Direct Investments (FDIs) and this explains the government drive to bring the Nigerian IP system at par with international practice and standard.
The purpose of this article is enlightened, mostly non-lawyer business individuals and corporate enterprises on the repertoire of terms and the workings of IP in Nigeria. This article might not answer all your IP inquiries but would definitely wet your appetite of IP knowledge; and equip you with just-enough information to make informed business decisions.
2. COPYRIGHT
Copyright is a significant specie of Intellectual Property which includes: literary works, musical works, artistic works, cinematographic Films, sound recordings, and broadcast. The Nigerian copyright practice is governed by the Copyright Act Cap. C28 (LFN 2004) Literary works include novels, stories, choreographic works, computer programmes and etc. musical works also include works composed for accompaniment. Artistic works include painting, drawing, woodcut and maps, etc.
Cinematographic film include fixation of sequence of visual image that can be seen and associated sound tracts that can be held. Sound recording on the other hand is a fixation of sequence of sound capable of being held but does not include sound track associated with cinematographic films. The above works will be eligible for copyright if sufficient efforts have been expended to give them an original character (i.e. originality) and if the works have been fixed in a medium of expression (i.e. fixation) now known or later to be developed. However, an artistic work made with the intention to be used as a model or pattern to be multiplied by an industrial process will not pass for copyright but will qualify as an industrial design which shall be aptly described later in this article.
2.1. WHO IS ENTITLED TO COPYRIGHT IN NIGERIA? The following persons are entitled to copyright in Nigeria:
1. Persons who are either Nigerian citizens or domiciled in Nigeria;
2. Persons whose works are first published or made in Nigeria;
3. Persons who are employed to make a work in the course of their employments;
4. Persons who are commissioned to make a work;
5. Proprietors whose works are made by authors in course of their employment by the proprietor for the purpose of publication in a newspaper, magazine or similar periodicals;
6. Persons to whom the copyright has been transferred either by assignment or testamentary dispositions; persons to whom license have been granted;
7. The Government, where it has commissioned someone to make a work;
8. Companies registered in Nigeria which produces works of copyright;
9. Non- Nigerians who are neither domiciled in Nigeria but belong to a Convention Country to which Nigeria is a party provided their works are first published in such convention country, or by the United nations, the African Union or ECOWAS.
2.2. DURATION OF COPYRIGHT
Copyright in Literary, Musical and Artistic works other than photographs shall expire seventy years after the end of the year in which the author dies. If the author is a corporate body, seventy years after the end of the year in which it was first published. In case of cinematographic films, sound recording and photographs, the copyright shall subsist for fifty years after the recording was first made and fifty years after the shot was first taken in case of photographs. With respect to Broadcast works, the copyright will expire fifty years after the end of the year in which the broadcast first took place.
2.3. THE RIGHTS CONFERRED ON A COPYRIGHT OWNER
Copyright in Literary and Musical works for example guarantee the exclusive right of the owner to reproduce, publish, perform, adapt, distribute, sell and broadcast An artistic work will also guarantee the owner the exclusive rights of control of the reproduction, publication and adaptation of the work. In the case of a cinematographic film the copyright owner has the exclusive control to make copies, record and distribute copies. In respect of sound recording, the copyright owner can exclusively control the direct or indirect reproduction and distribution. Lastly, the copyright owner of a broadcast can also exclusively control the recording and communication of the work.
2.4. COPYRIGHT ADMINISTRATION IN NIGERIA
The Nigerian Copyright Commission (the Commission) is the regulatory body for copyright administration in Nigeria. The Commission is an agency of the Federal government under the Ministry of Trade, Commerce and Industry. The Commission establishes Collecting Societies which are authorized to collect dues, royalties and fees of Copyright owners of the particular specie of work for which they are set up. An example of this is the Musical Society of Nigeria (MCSN) which collects dues on behalf of their members for the use, license and assignment of their works.
The Commission provides for Copyright Inspectors whose primary duty is the protection of copyright against infringement in Nigeria. It must be noted however that the law does not mandate the registration of copyright in Nigeria. The law only requires that publishers, printers, producers and manufacturers of works should keep records of all works produced by them showing the name of the author, title, year of publication and the quantity of the works produced.
The Commission is also empowered to maintain an effective data bank on authors and their works Nevertheless, in practice, the Commission does register copyrights upon being notified by the copyright owners under the Copyright Notification Scheme of the Commission, thus creating a centralized copyright database, like we have in other jurisdictions. It must nonetheless be emphasized that registration of copyright works is not a requirement of copyright itself. It is merely required for administrative convenience and purpose. Thus failure to notify or register does not whittle down the copyright of any work; registration only adds documentary ownership value to an existing copyright work.
2.5. COPYRIGHT NOTIFICATION
Copyright Notification is a scheme designed by the Nigerian Copyright Commission to enable creators of certain copyright works or persons who have acquired rights in these works to give notice of their copyright to the Nigerian Copyright Commission or notice of any transfer of right thereof. Such facts as are disclosed in the notification will form part of the database of the Commission mandated to be kept under the Copyright Act, and has evidential value in proof of the possible date of creation of the work and other facts stated in the notification form.[2]
2.6. PROCEDURE FOR COPYRIGHT NOTIFICATION
- The applicant will fill the form in line with the instructions provided on it, and ensure that the declaration therein is endorsed before a Commissioner for oaths or Notary Public.
- The completed application form with required copies of the work, which the applicant is seeking notification should be returned to the Commission’s office nearest to the applicant and accompanied with the required documents and evidence of payment of Notification fee of N6, 000.00 (Six Thousand Naira).
- Upon receipt of the form, the Commission processes same and issues applicant with a Notification Acknowledgement Certificate.
2.7. NEIGHBOURING RIGHT OR PERFORMERS’ RIGHT
Since the works of a public performer though original but is not fixed in a tangible medium as required by the law, such works are not eligible for copyright protection. However, the Nigerian Copyright Act[3] recognizes such works as performer’s right and gives such performer the exclusive right to control with respect to his performance, the performing; recording; live broadcasting; reproducing in any material form; and adaptation of the performance. Performance here includes dramatic and musical performance and live performance of literary recital or rendition.
3. TRADE MARK (TM)
A trade mark (TM) is a mark used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of the trade between the goods and some persons having the right either as proprietor or as registered user to use the mark. This mark may include a devise, brand, heading, label, ticket, name, signature, word letter, numeral or a combination of these marks. The Nigerian Trademark Act Cap T13 LFN 2004 regulates trademarks registration and practice in Nigeria.
3.1. TRADEMARKS REGISTRATION
The law requires that a Register of TM must be kept by the Registrar of TM. The Register shall contain all registered TMs with the names, addresses and other details of their proprietors.
The filing requirements for TM registration in Nigeria are as follows:
(1) An application form containing the full names, street address and description of the applicant
(2) List of good and services
(3) A simple signed power of Attorney
(4) 15 prints of the mark.
However the law disallows the registration of Trade Marks that are scandalous, deceptive and capable of causing confusion or contrary to law or morality. Neither will the Registrar register a Trade Mark which is identical or nearly resembles an existing registered Trade Mark belonging to another proprietor.
3.2. VALIDITY OF REGISTRATION
In order for a Trade Mark to be registrable, it must contain at least one of the following:
(1) The name of the company, individual of firm represented in a particular manner;
(2) The signature of the applicant or his predecessor in his business;
(3) An invented word or invented words;
(4) A word having no direct reference to the character or quality of the goods and not by its ordinary signification, a geographical name or a surname; and
(5) Any other distinctive mark.
A mark is said to be distinctive when it is used in relation to a good or service to distinguish the said good or service from that of the Trade Mark’s proprietor in the course of trade from other goods or services.
3.3. EFFECT OF REGISTRATION AND NON-REGISTRATION
The proprietor shall upon registration be entitled to exclusively control over the use of the Trade Mark in relation to the goods and services under which it is registered. On the other hand, A Trade Mark which is unregistered will prevent the Trade Mark proprietor from instituting any proceeding to prevent or to receive damages for infringement of his Trade Mark under the Trade Marks Act. However, this does not affect his right to bring an action in passing-off of goods at common law.
3.4. DURATION OF TM
Trade Mark shall subsist for a period of seven years from the date of first registration and can be renewed from time to time in accordance with the provision of the law.
3.5. ASSIGNMENT OF TRADE MARK AND PERMITTED USE
A Trade Mark ( whether registered or not) is assignable and transmissible with respect to either all or some of those goods in respect of which it is registered, or in connection with the goodwill of a business. However, with respect of a registered Trade Mark, record of such Trade Mark and assignment made in respect of it shall be registered in the Register of Trade Mark and shall be made available for the inspection of the public. In the same vein, a person other than the Proprietor of a Trade Mark may be registered as a registered user of the Trade Mark in relation to all or any other goods in respect of which it is registered.
The law also allows for defensive registration of a well-known or invented mark in respect of familiar goods. This simply means that marks, which have become so well-known that there use in relation to a particular goods for which they are not registered, would likely to be taken as Trade Mark for those familiar goods for which they are not registered, the person entitled to the Trade Mark may make an application in respect of such familiar goods to be registered as Defensive Trade Mark. Lastly, applications for Trade Mark registration from Trade Mark owners, who have their Trade Marks registered in countries which are parties to a Convention to which Nigeria is a party, may be registered in priority to other applications.
4. PATENT AND INDUSTRIAL DESIGNS
A patent is described simply as a monopoly in respect of an invention. The Patent Act 1970 (now designated Cap P2, LFN 2004) governs the registration and practice of patent in Nigeria. To qualify for patent, an invention must comply with the following requirements:
(1) it must be a new or novel invention or an improvement upon a patented invention; which
(2) result from an inventive activity; and
(3) It is capable of industrial application.
An invention is new or novel if it does not form part of the state of the art. State of the art means everything concerning that art or field of knowledge which has been made available to the public anywhere or anytime. Patent cannot however be obtained in respect of plant or animal or any biological process for the production of plants and animals. Neither will patent be granted in respect of inventions which exploitation would be contrary to public order or morality, for example cloning.
4.1. RIGHT CONFERRED BY PATENT
A patent confers on the patentee the right to preclude any person from doing the following:
(1) Where the patent is granted in respect of product, the act of making, importing, selling, or using the patent or stocking it for the purpose of sale or use.
(2) Where the patent has been granted in respect of process, the act of applying the process
4.2. PATENT APPLICATION PROCEDURE
All patent applications are made in the prescribed form. The form may be accompanied by the following:
(1) A Power of Attorney (if made by an agent).
(2) CTC of priority application where applicable.
(3) Copy of PCT international publication( where necessary)
(4) A declaration signed by the true inventor that his name and address be mentioned in the application.
(5) Prescribed fee.
4.3. WHO IS ENTITLED TO PATENT?
The right to patent is vested in the person who is the first to file whether or not he is the true inventor. Where the invention is made in the course of employment or in the execution of a Contract for the performance of a specific work, the right of a patent in the invention shall be vested in the employer. The employee may however be entitled to fair remuneration if his contract does not require him to make such invention or if the invention is of exceptional importance.
4.4. DURATION, LAPSE, SURRENDER AND NULLITY OF PATENT
Right in a patent subsist for a period of 20 years from the date of filling of the relevant patent application and it is not renewable. Patent shall lapse if the prescribed annual fees are not duly paid upon the expiry of the period of grace Similarly, a patentee may by a written declaration addressed to the Registrar of Patent, surrender his patent. The surrender shall take effect upon registration. A patent is nullified where the description of the invention or claim does not conform to the provision of the law or if it is defeated by a prior application from an earlier foreign priority.
4.5. LICENSE OF PATENT
A patentee is entitled by the law to apply in writing to the Registrar for the words “Licenses of Right” to be registered in respect of his patent; the Registrar shall enter the words accordingly in the register. Upon this entry, any person may come forth to obtain a license to exploit the patent on such terms as the parties may agree. Such licensee is however barred from assigning the license or granting further license in respect of the license.
4.6. INDUSTRIAL DESIGN (ID)
An Industrial Design according to the Patent and Designs Act is any combination of lines, colours or both; any three-dimensional forms (whether or not associated with colours) intended by the creator to be used as a model or pattern to be multiplied by an industrial process.
4.7. ELIGIBILITY FOR REGISTRATION
An Industrial Design is registrable if it is new and is not contrary to public order or morality. A design made available to the public anywhere and at anytime before the date of registration is not new. However an Industrial Design will not be deemed available to the public solely because the creator has exhibited it in an official or officially recognized place within the period of six month preceding the filling of the application for registration.
4.8. INDUSTRIAL DESIGN APPLICATION
An application for the registration of an industrial design shall be made to the Registrar of Patent and Designs and such application shall contain the following:
(1) A request for the registration of the design.
(2) The applicant’s full names and address or an address of service in Nigeria if the creator lives outside Nigeria.
(3) A specimen of the design or a photograph or a graphic representation of the design.
(4) An indication of the kind of product for which the design can be used and such other matters as may be prescribed.
(5) Six set of formal drawing
(6) A power of attorney( where applicable)
(7) Priority application ( where applicable)
(8) A prescribed fee
4.9. DURATION OF INDUSTRIAL DESIGN
An Industrial Design shall be effective in the first instance for five years from the date of the application for registration and may be renewed for two further consecutive periods of five years each.
NB: the Provisions on who is entitled to Industrial Design, nullity of Industrial Design, license and transfer of Industrial Design are the same as in patent.
5. INFRINGEMENT AND ENFORCEMENT OF IP RIGHTS
5.1. INFRINGEMENTS
- COPYRIGHT. The Copyright law provides that an infringement of the rights conferred on a copyright owner has occurred if anybody who without the license or authorization of the owner of the copyright does an act which is controlled by copyright, such a person is said to have infringed on the owner’s copyright.
- TRADEMARK: In similar vein, a registered Trade Mark would be deemed to have been infringed upon under the Nigerian Trade Marks Act if any person no being the proprietor, assignee or registered user of the TM uses a mark identical with or so nearly resembling it that it can likely deceive or cause confusion in the course of trade, in relation to goods in respect of which it is registered.
- PATENT AND INDUSTRIAL DESIGNS: where a person other than the patentee or the Industrial Design owner or any of their respective assignees or privies does or causes any act to be done with regards to the use of a Patent or Design, it shall amount to an infringement of such patent or Industrial Design as the case may be.
5.2. ENFORCEMENT:
Upon the occurrence of any of the such infringements, the Copyright owner, Trade Mark owner, the patentee or Industrial Design owner respectively may therefore bring a suit against such violator and may be entitled to reliefs by way of damages, injunction (including an Anton Piller order) ,rendering of account and such relevant reliefs as the court may deemed necessary in the circumstance.
Furthermore, there exist other administrative enforcement options formulated to protect IP rights in Nigeria. An instance could stem from the Strategic Action against Piracy (STRAP) initiative of the Copyright Commission. STRAP which ensures an intensified fight against piracy and protects IP rights with the use of hologram security device. Nigeria also boasts of an Industrial Property Tribunal set up under the Commercial Law Department of the Ministry of Commerce and Tourism.
6. NOTAP REGULATIONS AND REQUIREMENTS.
NOTAP is an acronym for National Office for Technology Acquisition and Promotion and it is under the supervision of the Federal Ministry of Science and Technology.
The major regulatory objective of NOTAP concerns the evaluation of the Technology Transfer Agreement to ensure that:
(1) The terms and conditions contained in the agreement are equitable and fair to all parties;
(2) Payments involved in the agreements are commensurate with the obligation of the transferors;
(3) Adequate safeguard for effective transfer of know-how to indigenous enterprise in the terms and conditions of the agreement;
(4) Tie-in-clauses which impede economic gains and innovative capability such as non-reciprocal improvements etc are expunged;
(5) Relevant data are drawn for national technology policy formulation; and
(6) Commercial transactions are in compliance with the goals and aspirations of technology policy.
6.1. THE REQUIREMENT FOR REGISTRATION OF TECHNOLOGY TRANSFER AGREEMENT
According to the law, an agreement involves the transfer of technology if its purpose or intent is, in the opinion of NOTAP, wholly or partially connected with any of the following matter:
(1) The use of Trade Mark
(2) The right to use patented invention.
(3) The supply of technical expertise in the form of the preparation of plans, diagrams, operating manuals or any other form of technical assistance of a description whatsoever.
(4) The supply of basic and detailed engineering.
(5) The supply of machinery and plant.
(6) The provision of operating staff or managerial assistance and the training of personnel.
6.2. PROCEDURE FOR REGISTRATION OF TECHNOLOGY TRANSFER AGREEMENT
All application for the registration of Technology Transfer Agreement shall be addressed to the Director of NOTAP. The following are the procedures for registration of Technology Transfer Agreement at NOTAP:
(1) Completion and submission of all NOTAP forms and other annexed documents.
(2) Communication to companies on observations and amendment to agreement if any, by NOTAP.
(3) Issuance of letter of approval to companies for implementation of agreement.
(4) Payment of presentation fee.
6.3. EFFECT OF NON- REGISTRATION
Non-registration of Technology Transfer Agreement under the law does not render the contract or such Technology Transfer Agreement void or unenforceable, it only frustrates the transfer of any fee or payment due under the contract to the account of the alien outside Nigeria since there is a lack of relevant data on technological inflow for policy formulation.
7 TREATIES
Nigeria is a party to the following treaties and enjoys the membership of the following international bodies:
(1) Membership of WIPO Treaties
(2) WIPO Convention since April 1995
(3) Paris Convention ( Industrial Property) since September 1963
(4) Berne Convention ( Literary and Artistic Works), since September 1993
(5) Patent Co-operation Treaty(1970) , since May, 2005.
(6) PLT (Patent Law Treaty), since April 2005.
(7) Rome Convention( Performers, Producers of Phonograms and Broadcasting Organisations), since October 1993.
(8) WTO, member and signatory to TRIPS Agreement, since January 1995.
(9) Member of UCC (the Universal Convention on Copyright), since November 1961.
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