Tuface v. Tubaba: Who Owns The Name?

Innocent Idibia popularly known as Tuface recently announced that he would be changing his stage name (moniker) to “Tubaba”.

Although the multiple award winning artiste did not give further insight into the reasons for rebranding, Tuface (Tubaba) has joined the ranks of Nigerian and foreign Artistes and Entertainers who have changed their names over the years.

Popular examples include Sean Combs (Puff Daddy, P Diddy, Diddy), Calvin Broadus (Snoop Doggy Dogg, Snoop Dogg, Snoop Lion), Shawn Carter (Jay-Z, Jay, Hova), Kenny Saint Brown (Kenny St Brown, KSB, Kenny St Best), D’banj (Ejanla, Bangalee)…

 

 

 

 A Brand name is an important asset for any entertainer. A brand name defines the Artiste’s persona and is considered by many to be a major factor in winning or losing public acceptance. Nigerian entertainment monikers often employ exaggerated and catchy cultural, social and western elements.

Some entertainers successfully leverage on the public goodwill attached to these brand names by producing or endorsing consumer products (one recent example in Nigeria is Dbanj’s ‘Koko Garri’ line).

Contrary to general opinion, not all names are ‘free’ or ‘available’ for use in the industry. An artiste seeking to use or benefit from a stage name must first ensure that the name is not a registered (or unregistered) trademark. If the stage name is not already legally owned, the artiste may protect and secure the brand by registering a Trademark.

 

A Trademark is a sign used to identify brands that originate from a specific source. Trademarks help consumers to differentiate their favorite brands from competitors brands. Trademarks protect the right to brand goods and services under distinct names, logos and marks.  Registered trademarks guarantee the legal right to promote brands, build goodwill and protect the Trademark owner’s reputation by granting the Trademark owner the exclusive right to use the brand or logo. A Trademark owner can also restrain opportunists from diluting an established brand or taking advantage of the brand.

 

Brand ownership can not be complete until the brand is registered as a Trademark. Thus, the brand owner can only benefit from legal protection under the Trademarks Act (TMA) if the brand is a registered Trademark.

An electronic Trademark search at the United States Patents and Trademarks Office website reveals  that musicians in the US literally ‘own’ their stage names. Examples include “Snoop Doggy Dog” TM 2278013 owned by Calvin Broadus, “Miley Cyrus” TM 4261735 owned by Smiley Miley Inc, “Jay-Z” TM 2485110 owned by Shawn Carter, “Kenny Rogers” TM 1199918 owned by Kenny Rogers Productions, and the list goes on.

Nigerian musicians are known for their creative music and stage names. The rapid growth of the entertainment industry is expected to herald a sharp increase in stage-name disputes and conflict over brand ownership. Early trademark registration may be the answer to defusing this ticking time bomb.

A Constitutional Analysis Of The Rivers State Legislative Crisis

On Tuesday the 9^th of July, 2013, proceedings at the Rivers State House of Assembly were interrupted by a violent mob of thugs, security agents and politicians. Video clips of the episode (available here), strewn all over social media tell a gory tale of mayhem at the Rivers State House of Assembly located at No. 3 Forces Avenue, GRA Phase III, Port Harcourt, Rivers state.

The House of Assembly Plenary Session devolved into a free-for-all following an attempt by 5 members of the House of Assembly, to impeach the Speaker of the House of Assembly, Mr. Otelemabe Amachree. On Wednesday 10^th July, 2013 the Federal House of Representatives voted in favor of a motion to “take over the functions of the State House of Assembly”. The motion was moved pursuant to Section 11 (4) of the 1999 Constitution of the Federal Republic of Nigeria (as amended) called on the Lower House to intervene and declare what has now been termed as a “Legislative State of Emergency”.

Section 4 (1) of the 1999 Constitution vests the legislative powers of the Federal Republic of Nigeria in the National Assembly. Section 47 of the same Constitution divides the National Assembly into the Senate and the House of Representatives. The Senate consists of 3 Senators per State, and 1 Senator representing the FCT making a total of 109 members. The House of Representatives has 360 members representing constituencies of nearly equal proportions from each state of Nigeria including the FCT.

The legislative powers of a state are vested in the State House of Assembly, by virtue of section 4 (6) of the 1999 Constitution. Unlike the Federal Legislature, the seats in a State House of Assembly are not constitutionally restricted to a specific number, provided that a State House of Assembly shall consist of not less than twenty-four and not more than forty members (Section 90, 1999 Constitution). Under our Federal system, the various tiers of Government enjoy a restrictive form of autonomy by which the States are largely dependent on the Federal Government.

Section 11 (4) and (5) of the 1999 Constitution provide that

(4) At any time when any House of Assembly of a State is unable to perform  its functions by reason of the situation prevailing in that State, the National Assembly may make such laws for the peace, order and good government of that State with respect to matters on which a House of Assembly may make laws as may appear to the National Assembly to be necessary or expedient until such time as the House of Assembly is able to resume its functions; and any such laws enacted by the National Assembly pursuant to this section shall have effect as if they were laws enacted by the House of Assembly of the State:

Provided that nothing in this section shall be construed as conferring on the National Assembly power to remove the Governor or the Deputy Governor of the State from office.

(5) For the purposes of subsection (4) of this section, a House of Assembly shall not be deemed to be unable to perform its functions so long as the House of Assembly can hold a meeting and transact business.

The sovereignty of a State is sacred; therefore this section contains certain preconditions for its operation.

Firstly, before this section can be activated, the House of Assembly must have been unable to perform its law-making functions. Section 11 (5) of the Constitution states that the situation described in subsection (4) will only arise when the House of Assembly cannot hold a meeting and transact business. This fact cannot be determined in one or two days. An interruption of State function this grave cannot be the product of a hasty or rash decision.

Secondly, only the National Assembly as an organ can intervene in the business of a State House of Assembly. Consequently, neither the Senate, nor the House of Reps can intervene independently under Section 11 (4) in any way or form. Consequently, any law made pursuant to this subsection can only be validly enacted following the constitutional process of law-making in the State, to the Governor’s assent.

Thirdly, the only manner of intervention contemplated by the Constitution is in the enactment of laws for the peace, order and good government of that State. This appears to be the only situation under the Constitution where one arm of Government at the Federal level can unilaterally interfere with the legislative sovereignty of a State. In this situation, the State’s legislative integrity is preserved by the National Assembly. The wording of the subsection presupposes considerable interaction between the State and the Federal legislature; hence the interregnum is only operative until such time as the House of Assembly is able to resume its functions. Thus it is the intervention of the House of Assembly that will bring the interference to an end.

Finally, the National Assembly does not enjoy unlimited legislative power under this subsection in that it cannot impeach either the Governor or Deputy Governor.

In essence, Section 11 (4) simply provides for a situation where the National Assembly may intrude in the sovereignty of a State by enacting laws for the peace, order and good governance of the State. It is interesting that nowhere in the subsection does the Constitution use the phrase “Take-over” bandied around carelessly thereby suggesting an oversight function by the National Assembly.

 

If the sparse number of Bills that have been passed into law by the 7th National Assembly inaugurated since the 6^th of June, 2011 is anything to go by, the sudden fervor to ‘takeover’ legislative control is indeed curious. The Constitution empowers the National Assembly to function under the subsection when a House is unable to transact the business of legislation. In spite of the sordid display enacted on Tuesday 9^th of July, 2013, there however doesn’t seem to be a break in transmission at the Rivers State House of Assembly.

The language of Democracy must be subservient to the Rule of Law. Federal Legislature must cautiously refrain from soliciting cheap publicity or further turning the Rivers State incident into a theatre of the absurd by making rash statements. 

According to the Senate President, “Clearly, what is happening in Rivers State is an embarrassment to legislators across the length and breadth of this country.”

EXPLOITING PATENT RIGHTS IN NIGERIA: THE CASE OF BEDDINGS AND STRANGE BEDFELLOWS

On the 5^th of June, 2012, a Federal High Court Judge delivered a remarkable judgment in Suit No FHC/ABJ/CS/82/11 instituted by Beddings Holdings Limited against INEC & 6 Others. The Hon. Justice A. Bello affirmed that the Patent and Industrial Design rights (RP 12994 and RD 5946 respectively), held by Beddings Holdings Limited (the Plaintiff) for the invention “Transparent Ballot Box” had been infringed by the Independent National Electoral Commission when it licensed the importation of transparent ballot boxes by 2 private Nigerian Companies also joined as parties to the suit, without seeking the requisite license from Beddings Holdings Limited. The imported Transparent Ballot Boxes were used for the 2011 General Elections. Beddings Holdings Limited had obtained both Patent and Design rights for the Transparent Ballot Box since January, 1998.

The Court’s ruling is significant in many ways, one of which is the somewhat extreme possibility that the outcomes of the 2011 General Elections and subsequent Electoral exercises may be nullified as a result of the unlicensed use of these ballot boxes by INEC. By importing and using these ballot boxes without the appropriate license or grant from the Inventor, INEC infringed on the right of the Patent Holder. Adopting the proposition that a bad tree cannot yield good fruit, it would appear that the infringement taints the results that proceed from the illegal use of the Transparent Ballot Boxes. This is a clear example of an instance where the courts have placed precedence on the personal rights of an individual over public policy.

A patent is a right granted to an inventor over an invention allowing the inventor to exclude others from manufacturing, using, importing, offering for sale or selling the patented invention.

Section 6 (1) of the Patents and Designs Act, Cap P3, LFN 2004 provides that:

6 (1) A Patent confers upon the Patentee the right to preclude any other person from doing any of the following acts-

(a) Where the patent has been granted in respect of a product, the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use; and

(b) Where the patent has been granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process, any of the acts mentioned in paragraph (a) of this subsection.

This case should serve as a lesson that Public (and Private) sector Organizations must respect and value the intellectual assets of any and all Nigerians. This is a Fundamental Right protected by the 1999 Nigerian Constitution.

Section 44 of the 1999 Constitution of the Federal Republic of Nigeria states that:

44. (1) No moveable property or any interest in an immovable property shall be taken possession of compulsorily and no right over or interest in any such property shall be acquired compulsorily in any part of Nigeria except in the manner and for the purposes prescribed by a law that, among other things –

(a) Requires the prompt payment of compensation therefore and

(b) Gives to any person claiming such compensation a right of access for the determination of his interest in the property and the amount of compensation to a court of law or tribunal or body having jurisdiction in that part of Nigeria.

Unfortunately the court did not expressly address the effect of the infringement on the 2011 Elections and INEC’s electoral activities as the Plaintiff didn’t raise clear-cut issues along that line.

Another significant point that must not be lost on us is the Nigerian Judiciary’s increasingly amicable disposition to speedily protecting the rights of Intellectual Property owners. In the past, the slow, protracted litigation system served as a disincentive to the prosecution of IP Infringement. Intellectual Property Owners became skeptical about seeking legal redress with no definite end in sight. In recent times, Nigerian courts have shown eagerness to rescue IP Owners, thereby giving hope to innovators and creators.

From an economic perspective, the Patent system rewards creativity and innovation through the guarantee of exclusive rights of ownership to inventors. In return for this protection, the inventor (also called the Patentee) is required to disclose the workings and components of the invention, in order to promote widespread dissemination of innovation. This information is available to the public and may be used to create newer inventions, technologies, goods and services and so on. Securing Patent protection is the first step towards exploiting and commercializing an invention.

It is very unfortunate that we lose our Newtons, Einteins, Steve Jobs and Bill Gates, daily. Many Nigerian inventors and innovators live in obscurity, working from hand to mouth under hard conditions. They are hidden away in dark hallways and dirty corridors; confined to dilapidated stairways in Computer Village, Alaba international Market, Ladipo Market and similar locations around the country. Many would-be inventors are deactivated or neutralized by JAMB and the educational system; they are forced into professions without regard to their natural aptitude and live repressed and unfulfilled among the working class.

Nigeria already loses Trillions of Naira annually in lost revenue and opportunity cost from unexploited Intellectual Assets. The commercialization process will create thousands of jobs, generate revenue for Government in the form of taxes and filing fees and improve the quality of life of the citizenry and significantly boost our GDP.

The Beddings Holding judgment presents a ray of hope for the Nigerian inventor. Current reality, based on a personal study conducted in conjunction with the Intellectual Property Institute Nigeria, shows that over 95% of the registered patents in Nigeria belong to foreigners and non-Nigerians. Does this mean Nigerians don’t invent or are not creative?

Nigeria can boast of Mohammed Abba, Oviemo Ovadje, Emeka Emeagwali and other notable inventors. A cursory perusal would show that Nigeria is a country of innovators replete with inventors in various fields. Tragically, the commercialization process is largely misunderstood and these inventions are neither protected nor properly exploited. For example, a common assumption is that Patents apply only to mechanical inventions. Patents can be obtained and exploited for inventions in practically all fields of endeavor. Nigeria is a country in need and Necessity, the mother of invention, is a Nigerian citizen. The multi-faceted problems in every area of society present us with the opportunity to invent our way out! In the 21^st Century, we must recognize the need to innovate our way to the future.

The Patents and Designs Act, Cap P2, LFN 2004, states the requirements for patentability in Nigeria. In particular, Section 1 (a) and (b) provides that (emphasis mine)

(1) Subject to this section, an invention is patentable-

(a) If it is new, results from inventive activity and is capable of industrial application; or

(b) If it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.

We can create new innovative solutions that solve everyday problems. Young Nigerians need to see the bigger picture; if we are to build a future for this country, we must take advantage of innovation, invention and creativity to reinvent Nigeria.

©2012 Folarin Aluko.

Folarin Aluko, a Legal Practitioner, is a Director of The Intellectual Property Institute (Nigeria)

e: fola.aluko@ipinstitute.org.ng

Is Nigerian IP the New Crude Oil?

In a parallel Universe, the year is 2025 and Nigeria is recovering from the successful conclusion of a 3-day warning strike. In this parallel Nigeria, the People, led by Labor and civil society leaders prevailed on the Federal Government to reverse its decision to remove the subsidy on Intellectual Property, Nigeria’s primary source of revenue.

The implications of the FG’s decision to remove the subsidy on Intellectual Property were far reaching; the removal of Government’s subvention would escalate the cost of intellectual assets, products and services.

Barely 24 hours after the President’s address, the cost of DVDs, CDs and Music Albums (original and pirated) tripled; Media Houses and Cinema owners announced their relocation to neighboring countries because of the high cost of procuring licenses to music, movies and broadcast content. Foreign and local inventions in science and technology would no longer be available due to the exorbitant cost of patent registration. Branded consumer products prices were expected to double due to the high cost of registering and managing their Trademarks and Industrial Designs.

In this parallel Nigeria, Intellectual Property is Nigeria’s ‘Black Gold’.

For now, that parallel universe exists only within the confines of this newspaper.

In today’s world, Intellectual property is the fulcrum on which the knowledge economy revolves. As the world progresses into the Innovation Age, an increased IP portfolio is insurance for the future. By purchasing Intellectual assets and knowledge products in the form of Patents, Trademarks, Copyright Licenses, trade secrets and other forms of IP, savvy corporations secure their relevance in the future.

Curiously, at this stage in the world’s development, many Nigerians regard IP with significant distrust; many find it hard to conceptualize ‘how a person can own property that cannot be seen, felt or experienced by the natural senses?’

Under the IP system, original and innovative creations of the mind expressed in concrete forms are regarded by law to be property that can be owned, transferred, sold (and stolen) like physical property.

From an economic point of view, the IP system seeks to promote investment in knowledge creation and innovation by instituting private rights to own and trade in new inventions, technologies, goods, and services. In return for this protection, owners of Intellectual assets are encouraged to disclose the workings and components of these assets, in order to promote widespread dissemination of new knowledge. This information is available to the public and may be used to create newer inventions, technologies, goods and services and the cycle goes on.

Intellectual Property Rights

Under the IP framework, intellectual assets are protected by separate categories of intellectual property rights.

A Patent authorizes an inventor to prevent the unlicensed making, selling, importing etc of an invention. A Patent right is granted for the invention of a product or technology that is new and innovative. Patent rights give the Inventor(s) a monopoly over the exploitation of the invention in return for revealing the technical details responsible for creating the invention.

A Trademark is a sign that is used to identify certain goods and services as those produced or provided by a specific person or organization. Trademarks, trade names and brands help to distinguish an organization’s goods and services from the goods and services provided by another. Trademarks protect an individual or company’s right to trade in goods and services under distinct names, logos and marks.  Registered trademarks allow companies to build goodwill and protect their reputation by granting the Trademark owner the exclusive right to use the brand or logo.

Copyright is an exclusive right granted to authors and owners of creative works (writers, artists, music composers, etc.) over their creations. Copyright protection is in the form of a monopoly right that controls the moral use and commercial exploitation of the works. Copyright contributes to creativity by giving creators incentives including recognition and economic rewards. These incentives motivate creators to share their works which then increases access to the works and enhances the enjoyment of culture, technology, knowledge, and entertainment.

IP Belongs to YOU, not Government!

Intellectual Property Rights (IPRs) are private in nature, meaning they belong to the individual and not Government. Unfortunately, in Nigeria, there seems to be a general misconception that ‘Government’ is responsible for the protection and promotion of IP. This thinking is false. If a trespasser started building on my plot of land, I wouldn’t wait for the ‘Government’ to “do something” about it! I would take advantage of the legal and administrative reliefs provided by law, to secure and assert my title!

The same principle applies to the exploitation and commercialization of IP. The owner of an IP asset must take advantage of the existing legal structure to first protect and then exploit that asset.

There is no doubt that Nigeria’s greatest assets lie in the vast and infinite pool of untapped intellectual assets and not the finite store of solid minerals buried beneath the ground. The Nigerian music and movie industry boom is an unrefined depiction of the economic benefits of creativity and IP.

Societies experiencing developmental challenges can either be breeding grounds for local innovation or dumping grounds for foreign technology. The time has come to embrace innovation in all facets and sectors of society: Government, Health, Security, Law and Justice Administration, Agriculture, Science and Technology, Education and so on. Everyone has a role to play.

The need for a comprehensive IP Policy cannot be overemphasized. A National IP Policy is a roadmap that sets out concrete strategies, guidelines and measures linking the creation, exploitation and management of IP with Nigeria’s Development Agenda.

Inventors and the University community should take advantage of the several patent databases which are public and searchable over the Internet. The National Office for Technology Acquisition and Promotion (NOTAP) is responsible for promoting the importation of technology into Nigeria.  The Patent register contains an abundance of technical information that can be deployed to solve local challenges, provided that the patent is not infringed.

Entrepreneurs and venture Capitalists can use these patent databases to find potential licensors and business partners with a view to first supporting local inventors and maybe importing useful know-how into the country.

Brand owners in the public and private sectors should focus on building solid brands protected by Trademarks Act. In order to fully exploit the economic components of brand value, the Brand must first be registered as a trademark.

Authors and creators of artistic, scientific and cultural works should rigorously pursue the protection of their intellectual assets and stop expecting ‘government’ to fight their battles for them.

Addendum

As we mark this year’s World Intellectual Property Day, the key to global relevance in the future is in a democratically organized intellectual property framework.

(c) 2012

*Published in Thisday Lawyer of 1st May, 2012

INTELLECTUAL PROPERTY ORGANIZATIONS IN NIGERIA

REGULATORY AGENCIES

Nigerian Copyright Commission

In order to ensure the effective co-ordination and administration of activities relating to copyright, as well as to further strengthen the copyright system in Nigeria, the Nigerian Copyright Commissionwas first established by the 1988 Act as the primary agency with the responsibility of regulating copyright matters in Nigeria.

The Commission also regulates and oversees the establishment and operations of Collective Societies for the various classes of copyright protected works.

The Commission is currently set up as a Federal Agency under the supervision of the Federal Ministry of Justice.

www.copyright.gov.ng

 

The Nigerian Intellectual Property Office

Also known as the Trademarks, Patents and Designs Registry, The Nigerian IPO regulates the administration of Industrial Property in Nigeria. The IPO is set up as a department under the Ministry of Trade and Investment (formerly Ministry of Trade and Commerce) and is responsible for the management of Trademarks, Patents and Designs applications in Nigeria.

These management powers are conferred by the provisions of the Trademarks Act, and the Patents and Designs Act.

Filings and searches at the IPO are conducted manually as the IPO’s online web portal has not commenced.

The National Film and Video Censors Board

The National Film and Video Censors Board was established by Act No. 85 of 1993 as the official regulatory agency for the film and video industry in Nigeria. The Board censors, classifies and rates both films and video works produced in Nigeria, and foreign films and video works imported for the Nigerian market. The Board also licences and registers all film and video outlets across Nigeria and keeps a register of the registered outlets among other functions

www.nfvcb.gov.ng

The National Office for Technology Acquisition and Promotion (NOTAP)

NOTAP is a government Agency created to nurture creative talents, identify researchers and inventors and create an enabling environment for inventors and creative works among other things. NOTAP’s core activities include Evaluation/Registration of Technology Transfer Agreements; Promotion of Intellectual Property; Technology Advisory and Support Services.

NOTAP currently seeks to assist local inventors in the process of promoting and exploiting inventions and innovations carried out by government funded research institutes and private sector organizations.

www.notap.gov.ng

 

LEGISLATIVE INSTITUTIONS

The National Assembly

The National Assembly is the legislative arm of the Federal Republic of Nigeria. It is a bi-cameral legislature divided into the Senate and House of Representatives. The National Assembly is constitutionally vested with the law making responsibilities and powers for the enactment of Federal Law and the operation of the Federal Capital Territory.

Under the Nigerian Federal structure, the National Assembly (to the exclusion of the State Houses of Assemblies) has sole legislative powers to enact, amend and repeal laws pertaining to Copyright, Trademarks, Trade or Business Names, Patents, Industrial Designs, and Merchandise Marks.

The National Assembly is currently undergoing a review of the Nations IP Laws with a view to bringing the laws into conformity with current realities and Nigeria’s obligations under various International Treaties.

Minister for Trade and Investment (former Minister for Commerce and Industry­­­)

The Minister for Trade and Investment is empowered by both the Trademarks Act, and the Patents and Designs Act to make Regulations and Rules of procedure governing the administrative and procedural operations for the registration of Patents and Industrial Designs in Nigeria. The Minister may also declare by Federal Gazette what Countries are convention countries for the purpose of the registration of Trademarks, Patents and Industrial Designs.

The Patent and Designs Rules of 1971 are in the form of subsidiary legislation to regulate the procedure and operation of the Patents and Designs Act.

 

DISPUTE RESOLUTION INSTITUTIONS

The Federal High Court

The 1999 Constitution of the Federal Republic of Nigeria vests exclusive jurisdiction in the Federal High Court to handle disputes relating to copyright, patent, trademarks and passing-off, industrial designs and merchandise marks.

In addition to its original jurisdiction, the Trademarks Act and the Patents and Designs Act convey an appellate jurisdiction on the Federal High Court over the proceedings of the Registrar at the Tribunal.

 

The Trademark/Patent Tribunal

The Registrar of Trademarks sits as a Tribunal to adjudicate over disputes and applications arising from the operation of the Trademarks Act.

The Registrar has the power to hear and decide upon contentious and non-contentious applications including applications arising from Trademark Opposition proceedings. The Registrar may make, expunge or vary an entry into the trademark register at the application of an interested person.

The Tribunal also adjudicates on appeals against the refusal of trademark applications by Trademark Examiners.

The Trademarks Act also permits an Applicant to apply to the Federal High Court to exercise the powers of the Trademark Tribunal.

CIVIL SOCIETY ORGANIZATIONS

Collecting Societies

Copyright Society of Nigeria (COSON)

COSON is a non-profit making organization of all owners of copyright or neighbouring rights in musical works and sound recordings. In the year 2000, existing collective management structures in Nigeria came together as one body in order to create a stronger force in the fight against copyright infringement and other forms of piracy in Nigeria, this coalition however took effect between 2009 and 2010.

http://www.cosonng.com

The legal status of other unregistered collecting societies and associations for musical works (such as the Musical Copyright Society of Nigeria) is currently uncertain in the light of recent litigation regarding same.

 

REPRODUCTION RIGHTS SOCIETY OF NIGERIA

Reproduction Rights Society of Nigeria (REPRONIG), Nigeria’s collecting society for reprographic rights. REPRONIG was licensed to operate as a collecting society for reprographic rights in late 2003 with funding support from KOPINOR, the Reprographic Rights Organization of Norway.

www.repronig.org

 

Anti-Counterfeiting Collaboration (ACC) Nigeria

The Anti-Counterfeiting Collaboration (ACC) Nigeria, a brainchild of Aluko & Oyebode (an innovative Nigerian Law Firm), is a non-political, non-governmental, not-for-profit coalition formed as a pressure group to assist in the reform of Intellectual Property Laws in Nigeria. The aim of the ACC, Nigeria is to bring brand owners, regulatory agencies, interest parties and the public together in order to fight against counterfeiting, infringement and piracy in Nigeria.

The ACC carries out regular meetings and programs including the ACC/INTA Annual Round Table organized in conjunction with the International Trademark Association (INTA).

www.anticounterfeiting.com.ng

 

Intellectual Property Institute Nigeria (IPIN)

The Intellectual Property Institute Nigeria (Ltd/Gte) is a non-profit organization established to promote the use of intellectual property and intellectual capital as tools for social, technological and economic growth. The Institute also seeks to increase the awareness and understanding of the use of intellectual property through activities including IP research, public enlightenment, specialized training and workshops, technical assistance, institution building and consultative forums.

www.ipinstitute.org.ng

www.facebook.com/ipinstitute.ng

PUBLISHING

Nigerian Intellectual Property Law Reports

The Nigerian Intellectual Property Law Reports is a dedicated report of judicial pronouncements and decisions on Copyright, Trademarks, Patents and Industrial Designs in Nigeria from 1917-2011.

The NIPLR is published by Alexander Payne & Co and is currently available in 6 volumes.

www.alexandernigeria.com

IP Implications of Public Sector Brands: Lessons From Lag

On the 29^th of May, 2012, the Federal Government announced its plans to change the name of the University of Lagos to Moshood Abiola University, in honor of the late Chief Moshood Abiola.

In the ensuing debate surrounding the propriety or otherwise of this move, the status of the University of Lagos as a brand in the educational sector has come into issue. Moving beyond the peripheral arguments surrounding the aural pronunciation proposed acronym (MAUL), it is evident that there is a general misunderstanding of the nature of Public Sector IP in Nigeria. This misunderstanding underscores the need for a National IP Policy/Framework.

This event presents an opportunity for us all to better understand Public sector brands with a view to putting things in proper perspective.

PUBLIC SECTOR BRANDS

Public Sector Brands are created by Public Sector organizations (Government Agencies, Ministries, Commissions, Departments, Regulatory Authorities, Committees, Corporations, etc) to communicate and promote Government’s programs and policies to its citizens and other Stakeholders. The principal distinguishing element from brands in the private sector is that the organization’s mandate isn’t profit-oriented but often concerned with the regulation, administration, supervision or coordination of a sector. In this sense, the word ‘Brand’ refers to the trade name, logo, word, mark, emblem, catchphrase, or slogan, of a particular product or person, or organization. Brands are powerful tools that can be used to create an identity and reputation of quality, integrity, professionalism and so on for goods and services in the mind of the target. Examples of public sector brands include the names, acronyms and logos of institutions  such as the NNPC, PHCN, EFCC, ICPC; and catchphrases such as ‘Eko o ni baje’, “Centre of Excellence”, “Food Basket of the Nation” etc

STATUTORY BRANDS

Brands (in either the public or private sector) are generally protected by the Trademarks Act or through the Common Law of Passing-Off. It is therefore important to distinguish a subset of the Public Sector Brands: the Statutory Brand. A Statutory Brand is a sign, emblem, word or phrase that is protected by the provisions of an existing Law.

Section 30 of the Companies and Allied Matters Act contains some restrictions on the use of certain words as Company name but these restrictions do not apply to creation and registration of brands and brand names.

A classic example of a Statutory Brand is found in Section 62 of the Trademarks Act which provides that:

(1) If in connection with any trade, business, calling or profession any person, without the authorization of the appropriate authority-

(a) uses the Arms of Nigeria or the Arms of a State (or arms so closely resembling the same as to be calculated to deceive) in any manner calculated to lead to the belief that he is duly authorized to use the Arms of Nigeria or the Arms of that State, as the case may be; or

(b) uses any device, emblem or title in any manner calculated to lead to the belief that he is employed by or supplies goods to the President or the Governor of a State in his official capacity as such, He shall be guilty of an offence and liable on summary conviction to a fine not exceeding forty naira.

(2) Nothing in the foregoing subsection shall be construed as affecting the right, if any, of the proprietor of a trademark containing any such arms, device, emblem or title as aforesaid to continue to use that trademark.

Thus the TMA grants the Arms of both Federal and State Governments statutory protection by placing restrictions on the registration of any brand bearing these Arms.

The name “University of Lagos” is a Statutory Brand by virtue of the provisions of Section 1 of the University of Lagos Act 1967, which provides that:

 (1)  There is hereby established a University to be known as the University of Lagos (in this Act referred to as “the University”) to provide courses of instruction and learning in the faculties of arts, law, medicine, science, education, commerce and business administration, engineering, and any other faculties which may, from time to time, be approved under this Act.”

Note that this statutory protection doesn’t extend to the acronym UNILAG or to the University’s logos.

A Statutory brand that fell into the same trap is the Nigerian Football Association (NFA). Earlier this year, a Federal High Court sitting in the FCT declared its purported successor (pursuant to a purported name change), the Nigerian Football Federation (NFF) to be an entity unknown to Law as the Nigerian Football Association Act, 1992 had not been amended to reflect the name change from the Nigerian Football Association to the Nigerian Football Federation.

The obvious implication for Statutory Brands is that the enabling Laws must be amended for the name change to become valid. The effect of the name change on the organization’s brand image is another kettle of fish.

The ultimate aspiration for building public sector brands should be to create a more humane representation of Government and its policies, plans and programs to the Citizenry. The brand’s main focus should be on instilling confidence and persuading citizens to aspire to higher social ideals and to shun social vices. These considerations should inform the Government at various levels when making decisions that affect the public’s perception of Public Sector Brands.

Until the necessary policies are in place, these mistakes will be repeated over and over. Nigeria urgently needs a comprehensive IP Framework to integrate IP into our national consciousness. If properly managed, IP in Nigeria is capable of generating thousands of jobs, generating billions of naira in revenue and harnessing valuable intellectual capital to impact health, agriculture, power and other critical sectors. For example, in many countries, public sector brands are leveraged on and exploited to promote Tourism and Hospitality.

NIGERIA’S INTELLECTUAL PROPERTY PROFILE

LOCAL REGULATION

THE COPYRIGHT ACT

Copyright is a bundle of exclusive rights granted by Government to the creator of an original work for a limited period of time, in exchange for the public disclosure of the work. Copyright protected works fall into eight broad categories:

• Literary Works including books, software code, sheet music, poetry, short stories and plays and works that incorporate text.
• Musical Works including musical compositions, instrumental compositions, songs and compositions accompanied with words.
• Artistic Works including paintings, artwork, architectural designs and drawings.
• Cinematograph Films including videos, movies and recorded dramas or screenplays.
• Sound Recordings include any record of a sequence of sounds capable of being heard by the ear, other than musical compositions.
• Broadcasts including sound or video broadcasts through wired, wireless, satellite or cable transmission; and rebroadcasts of any broadcast.

In addition to these categories, the Copyright Act also protects ‘Neighbouring Rights’ including the Expressions of Folklore and Performer’s Rights. The Act grants Performers the exclusive right to control the performing, recording, live broadcast, reproduction and adaptation of a dramatic, dance, musical or literary performance.

The Copyright Act, Chapter C28 of the Laws of the Federation of Nigeria 2004 regulates the operation and administration of Copyright in Nigeria. The Act establishes the Nigerian Copyright Commission (NCC) to oversee the operation of the Act, the NCC is also and conferred with wide powers which include the authority to prosecute infringement, license collective management societies and manage licenses for indigenous works.

Collective Management Organisation Regulations 2007

The NCC in the exercise of its regulatory powers established the Collective Management Organisation Regulations to guarantee order and fairness in the administration of Collecting Societies licensed by the NCC to operate in Nigeria.

Optical Discs Plant Regulations 2006

The NCC regulates the operation of Optical Disc Production Plants to improve the operation of local production of optical discs and to curb the unauthorized (pirated) local manufacture of optical discs.

The Nigerian Copyright Commission also runs and administers the Copyright Notification Scheme for the administrative registration of copyrightable works; and the Video Rental Scheme to govern the accreditation, registration and regulation of Video rentals in Nigeria.

 

TRADEMARKS ACT

A trademark is any brand, word, mark, logo, design or combination of any of these characters used in the course of trade. Trademarks are the principal form of protection for securing brand identity and goodwill which are integral to the operation of businesses in Nigeria. A trademark owner has the exclusive right to

• Use the trademark to identify goods and/or services
• Prevent others from using or marketing goods and/or services under the same or similar trademark
• Authorize the use of the trademark by others for a fee or interest.

The TMA provides that only registered marks can seek redress for Trademark infringement. Unregistered brands can however seek redress through the law of Passing-Off.

The Trademarks Act, Cap T 13, LFN 2004, was enacted on the 1^st of June 1967. The Act regulates the registration, renewal, assignment and administration of trademarks, logos, symbols and emblems including Collective Marks.

The TMA establishes the office of the Registrar of Trademarks, who is the administrative head of the Trademarks registry and Trademark Tribunal to adjudicate over disputes arising from or related to the TMA. The Registrar is vested with both administrative and semi-judicial powers.

Trademark Regulations

The Registrar of Trademarks is empowered by the TMA to make Regulations governing the practice, prescribing fees, imposing restrictions, classifying goods and for regulating the business of registration of Trademarks in Nigeria.

The Trademark Regulations form the Rules of Procedure that guide both Contentious and Non Contentious Trademark applications.

  

PATENTS AND DESIGNS ACT

The Patents and Designs Act (PDA) serves the dual function of providing for the procedure for the administration and registration of both Patents and Industrial Designs in Nigeria.

 

Patents

A Patent is a monopoly right granted by the Government of a country to the Creator or owner of an invention. The Act protects mechanical, pharmaceutical, electrical/electronic, medical, aesthetic, utility inventions among others). A Patent right grants the Inventor sole control (to the exclusion of all others) over the financial, technical and logistical aspects of the invention, subject to general restrictions. Patent rights are granted to reward inventor’s contribution to the development in society in exchange for the Inventor’s publishing the technical details of the invention.

Sections 1-11 of the PDA provide the general legal framework governing the registration and administration of Patents in Nigeria, from the requirements for patentability to Compulsory licenses.

Section 30 PDA empowers the Minister for Trade and Investment (formerly Minister for Trade and Tourism) to make Rules for the administrative and procedural regulations necessary to facilitate the registration of Patents under the Act.

Patent Rules 1971

The Patent Rules are enacted by the Minister of Trade and Investment pursuant to the Patents and Designs Act, to serve as the administrative and procedural framework regulating the registration of Patents in Nigeria.

The Patent Rules oversee the payment of fees, the use of forms and other documents, the procedure for application, procedure for examination, registration and publication of patent grants, the use of evidence and the judicious exercise of the Registrar’s discretionary powers among others.

Industrial Designs

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of products of industry and handicrafts such as technical and medical instruments, watches, jewelry, house-ware, electrical appliances, vehicles, architectural structures, textile designs, leisure goods and other luxury items.

Industrial designs make an article attractive and appealing, thereby adding to its commercial value and increasing its marketability.

Under the Patents and Designs Act, the owner of a protected industrial design is granted the right to prevent unauthorized copying or imitation of the design by others. This includes the right of making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied.

Designs Rules 1971

The Designs Rules 1971 were also enacted pursuant to the Section 30 of the PDA. The Rules also lay out the administrative and procedural framework governing the registration of Industrial Designs in Nigeria.

Patents and Designs (Convention Countries) Order 1971

The Patents and Designs Order of 1971 contains a list of 76 Countries declared to be Convention Countries for the purpose of claiming Foreign Priority in the registration of Patents and Industrial Designs under the PDA.

MERCHANDISING MARKS ACT

The Merchandising Marks Act was enacted to prohibit and criminalize the counterfeiting of registered trademarks by unauthorized persons; and the importation and sale of counterfeit goods. The operation of the Act applies to trademarks registered in Nigeria.

(c) 2012

*Published in Eureka! Nigerian IP and Innovation Magazine

THE ENTREPRENEUR’S 6 TIPS: PROTECTING YOUR PROPOSAL IDEA

Entrepreneurs (Runs Men) face several challenges when trying to sell ideas to prospective investors/companies. Let’s face it, we all hear stories of Company ‘X’ turned down Mr. Y’s proposal then suddenly developed a prototype that was strikingly similar making tons and tons of profit in the process!

Whether these tales are true or not, they contain a seed of truth concerning ideas and proposals: In today’s knowledge economy, the entrepreneur must take the necessary precautions to protect his/her ideas.

Here’s a short list of helpful suggestions.

🙂

• SHARPEN THE SAW: CONDUCT AN IP AUDIT

In simple terms, an Intellectual Property audit involves identifying the IP assets in an idea, reviewing the processes in place to generate and protect your intellectual property rights. Business ideas often contain a variety of intellectual property components so you need to identify what the IP assets are and how they can be exploited. For example, your idea may incorporate an invention or a novel business process which you will need to patent, a brand which you may have to register as a trademark; software, music or artistic creations which would enjoy copyright protection.

Identifying the IP components of your idea proposal will open up your eyes to several profitable ways in which you can exploit your idea. You may start to consider whether to assign or grant a non-exclusive license; whether to transfer only distribution rights while retaining production rights; or whether to be remunerated through royalties, a one-off payment or both etc.

• THE BIG PICTURE: A DETAILED PROPOSAL

Yes! As basic as this may sound, your idea must be reproduced in a detailed, concise document highlighting the key features of the concept and its various components. You should also include a financial outlay showing as clearly as possible the cost of implementing the idea and the financial benefits to the potential investor or company. Your proposal should also highlight the value of non-financial assets such as patents; copyrights; trademarks; goodwill and brand value. 😉

• GET PROTECTION: REGISTER IT!

Once your idea has been set to paper (or any presentation format), and you have identified the various intellectual components, you will need to secure the various expressions of your idea. You might consider applying for a patent license for an invention or a novel business process; registering a trademark to protect a brand or design; applying for a copyright notification certificate for the artistic, visual or audio components of your idea.

Truthfully, proving originality of an idea proposal could be rather onerous; however, your proposal document is a literary work and qualifies for Copyright protection under the Nigerian Copyright Act. A Copyright Notification Certificate, issued by the Nigerian Copyright Commission, may be used to show that you had the idea before approaching the recipient company. The Certificate also contains information, given under oath, regarding the name(s) of the creator(s), the date of creation and details of any license or assignment.

• THE SECRET WEAPON: THE CONFIDENTIALITY/NON-DISCLOSURE AGREEMENT

You should request that the recipient company sign a simple confidentiality/non-disclosure agreement before submitting your proposal, especially if the recipient can steal the idea and implement it. A confidentiality agreement offers specific protection when you need to disclose information about your idea to a prospective buyer. It states that the information contained in your proposal is proprietary and should not be shared, copied or disclosed without your permission. Disclosure is essential to the security of your idea. Always disclose the minimum necessary to seal the deal, without being fraudulent or misleading. This allows you maintain substantial control over your idea. Also, ensure that the representative of the recipient you are dealing with has the authority to receive the idea on behalf of the company.

• BLAZE YOUR PATH: ALWAYS LEAVE A PAPER TRAIL

When submitting your proposal for consideration, be sure to obtain an acknowledged duplicate copy of the proposal as proof of submission. The recipient should acknowledge receipt of the proposal and indicate the name and designation of the receiving officer, the date and time of receipt and the recipient’s official stamp or seal. Your acknowledgment copy serves as evidence of submission of the idea to the company in the event of litigation.

Also, far as possible, use letters for all correspondence with the company.

• TYING IT ALL UP: CONSULT AN EXPERT

Seeking professional advice from a Lawyer, Accountant, Marketing or other business development professional throughout the entire process will save you loads of time, effort and money in the end.  You will need professional advice throughout the entire process. Be sure to keep your Lawyer in the loop as developments occur.

(c) Folarin Aluko.