TRADEMARK REGISTRATION PROCEDURE IN NIGERIA

The registration of Trademarks is done at the Trademarks Registry, Commercial Law Department of the Federal ministry of Trade and Investment, Abuja. A certificate of Registration is issued at the conclusion of the process. Nigerian Trademark law requires that a proposed trademark sought to be registered must be in respect of a particular good or classes of goods or services. When registered, the trademark is entered in the Trademark Register. It may be instructive to add that Nigeria adopts the international classification of goods. In order to facilitate the registration of a Trademark in Nigeria the following information and documents are important:

• Name and Address of the owners of the Trademark
• Power of Attorney/Authorisation of Agent
• A specimen or representation of the mark sought to be registered

Kindly note that none of the documents need be notarized or legalized

An acknowledgement letter is issued as an evidence that the Registrar has received the application. Thereafter the Registrar will examine the application for registrability and cause an official search to be conducted for similarity of an existing registered trademark, or similarity with any pending application.

After the Registrar has satisfied himself of eligibility of the mark, a letter of acceptance will be issued to the company. Thereafter, the mark would be advertised in the trademark journal. The publication would include an invitation to persons wishing to object to the trademark application to do so within two (2) months of publication. Where no opposition or opposition was set aside, then the registrar shall issue certificate of registration on request.

The term of a trademark is seven years and can be renewed in perpetuity every fourteen years.

Nigeria is not a member of OAPI, ARIPO or Madrid Protocol

Time Frame

Filing to Acceptance: 3-5 weeks
Publication: 8-12 months
Certificate: 5-6 months (after Publication)

PATENT REGISTRATION PROCEDURE AND FACTS ABOUT NIGERIA

Nigeria is a member of the following unions:

• Paris Convention- 1963
• PCT- 2005
• Patent Law Treaty - 2000
• TRIPS Agreement – 1995

The Patents and Designs Act Cap P2 Laws of the Federation of Nigeria 2004 is the law governing patents in Nigeria and the Patents Rules of 1973 regulates the procedures adopted at the Patent Registry.

Eligibility of Invention

Patents are granted for the invention of products or processes. However, for an invention to be patentable, it:

• Must be new or an improvement upon a patented invention
• Must have an inventive step that is not obvious to someone with knowledge and experience in the subject,
• Must be capable of industrial application

Apart from the invention been new, been an inventive step and capable of industrial application, it must also not be, a scientific or mathematical discovery; theory or method; a literary, dramatic, musical or artistic work; a way of performing a mental act; playing a game or doing business; the presentation of information or some computer programs; an animal or plant variety; a method of medical treatment or diagnosis and must not be against public policy or morality.

Exclusive right of the Patentee

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 to claim a foreign priority for, a patent application in respect of the invention. The act further provides that the true inventor is entitled to be named as such in the patent.

It gives the owner the right to prevent others from making, using, importing or selling the invention without permission.

A patent confers upon the patentee the right to preclude any other person from doing making, importing, selling or using the product, or stocking it for the purpose of sale or applying the process or doing, in respect of a product obtained directly by means of the process. Industrial or commercial purposes.

The scope of protection granted by a letter patent is determined the claims. The description and plans or drawings included during the application will be used to interpret the claims. It is therefore very important for the claims to be properly drafted.

The rights of a patentee is are infringed if another person, without the licensee of the patentee. The infringement of the rights of a patentee is actionable at the suit of the patentee and will be entitled to all such relief by way of damages, injunction, and accounts or otherwise shall be available.

Requirement for registration

A patent application is made at the Registrar of Patents and Designs Registry, Federal Ministry of Trade and Investment. The following documents are to accompany the application:

• A request for a grant of patent with the applicants name and address
• A description of the invention including a claim or claims
• Plans and designs, if any
• PCT documents, if a PCT application
• A declaration by the true owner of the invention
• A signed power of Attorney or authorization
• Deed of Assignment (if necessary)
• An address for service in Nigeria if the applicants address is outside Nigeria

On the submission of the relevant documents, the registrar will cause an acknowledgement letter to be issued. This is merely a letter acknowledging the receipt of the patent application.Thereafter the patent will be examined based on form. The Patent office Nigeria offers formal examination only. Hence, if all required documents are submitted, a patent is usually granted. Acceptance letter is issued after formal examination.

The Registrar shall then grant the patent to the inventor and issue a patent certificate to which is annexed a copy of each of the specifications and the relevant drawings and plans.

Foreign Priority claims in Nigeria

Where the applicant seeks to avail himself of a foreign priority in respect of an earlier application made in a country outside Nigeria, there are three different priority claim processes available.

First, the applicant may decide to use the process provided under section 3 (4) of the act. The process requires that the applicant append to his application a written declaration showing the date and number of the earlier application, the country in which the earlier application was made, and the name of the applicant who made the earlier application.

The applicant will be expected to furnish the Registrar, not more than three months after the making of the application in the initial country with a copy of the earlier application certified correct by the Industrial Property Office (or its equivalent) in the country where the earlier application was made. This process may be used by an applicant from a country which is not a member of the Paris convention of PCT.

The second process is provided by section 27 of the act. This contains a provision for the making of 'Paris Convention patent applications’. The section provides that the Minister may, with a view to the fulfilment of a treaty, convention or other international arrangement or agreement to which Nigeria is a party, declare by order in the Federal Gazette that any country specified in the order is a convention country for purposes of this section. So long as there is in force an order under subsection (1) of this section declaring a country to be a convention country, a patent application or a design application in Nigeria, if an earlier corresponding application for the protection of an invention or the legislation of a design has been made in that convention country, shall be treated as having been made on the date when that earlier application was made, provided that this subsection shall not apply where the earlier application was made in the case of an invention, more than twelve months;

In 1971 the necessary ministerial declaration was made via the Patents and Designs (Convention Countries) Order, 1971. The countries that are to be recognised as Convention countries were listed. This list included the Paris Union members of the time. The countries are Algeria, Argentina, Australia, Austria, Belgium, Brazil, Bulgaria, Cameroons, Canada, Central African Republic, Sri Lanka, Chad, Cuba, Cyprus, Czechoslovakia, Republic of Benin, Denmark, Dominican Republic, Finland, France, Gabon, Germany, Greece, Haiti, Holy See, Hungary, Iceland, Indonesia, Iran, Ireland, Israel, Italy, Cote de Ivoire, Japan, Kenya, Lebanon, Liechtenstein, Luxembourg, Madagascar Malawi, Malta, Mauritania, Mexico, Monaco, Morocco, Netherlands, New Zealand, Niger, Norway, People's Republic of the Congo, Philippines, Poland, Portugal, Romania, San Marino, Senegal, Spain and Sweden

No subsequent declaration or list has been made since then. It is therefore not very clear whether subsequent signatories to the Paris Convention qualify as Convention countries in Nigeria. The Registrar of Patents has been accepting Convention applications from these later countries.

The third process is the Patent Corporation treaty, PCT, process. Nigeria is a signatory and member of the PCT. The Patent office being a member of Treaty since 2005 applies the contents of the treaty on national phase deadline of 30 months from the priority date.

In practice, the third process is the most commonly used process in Nigeria regardless of the fact that the Treaty has not been domesticated in the country.

The principle of Restitution in interregnum does not apply with respect to priority term in the case of a convention application.

Claims and Examination

A patent application shall relate to only one invention, but may include in connection with that invention, claims for any number of products or for any number of manufacturing processes for those products, and for any number of applications of those products. It may also include claims for any number of processes, and for the means of working those processes, for the resulting product or products and for the application of those products.

Under the provisions of the act, the Registrar is only permitted to examine every patent application as to its conformity with certain sections of the Act, such examination being in essence formal in nature. There is no provision in the Act on the substantive examination of a patent application. The Registrar is likely to grant the patent without enquiries to its novelty, inventiveness and industrial applicability or whether the specification sufficiently discloses the invention. Patents are granted at the risk of the patentee and without guarantee as to their validity. In other words, Nigerian law does not recognize substantive examination.

In practice, where the examination shows that the application satisfies the prescribed requirements, the patent will be registered without further examination by the issuance of an Acceptance Notice to the applicant. Where the application however fails in any respect, to conform to the prescribed requirements, the Registrar will not issue the Acceptance form until these requirements are met.

Duration and lapse of patent

Every patent in Nigeria shall lapse at the end of the twentieth year from the date of the filing of the relevant patent application. A patent shall also lapse if the prescribed annual fees are not duly paid in respect of it, provided that a grace period of six (6) months shall be allowed for the payment of the fees; and if the fees and the prescribed surcharge are paid within that period, the patent shall continue as if the fees had been duly paid.

Filing systems

Trademarks and Patents can be filed both electronically and using the IPAS through Local IP Agents. The Electronic Filing Method is Convenient as you can file from the comfort of your location. Applicants will automatically get their Electronic acknowledgement notice on the same day of payment. One of the Benefits of Electronic filing is the Check Status module. You can track your applications online using your online application ID provided on your Acknowledgment letter.

The second filing system is the Industrial Property Automation System (IPAS). IPAS is a PAS is an integrated IP administration system that can automate the processing of trademarks, patents and industrial designs. This filing system is a hybrid of e-filing and manual.

Patenting Inventions through NOTAP

The National Office has been mandated to assist in the patenting of all inventions and innovations carried out by government funded Research Institutes and others in the Private sector. In doing this, NOTAP through its information network provides the following services:

• Link the inventors with Patent Offices all over the world
• Assist inventors in drafting patent applications covering the invention in question.
• Process patent application through Industrial Property Offices.

Court Jurisdiction

Under Section 251 (1) (f) of the Constitution and section 26 Patent and Designs Act, the Jurisdiction to hear and dispose of legal proceedings under the PDA is vested in the Federal High Court and the section also provides that the provisions of the Trade Marks Act applicable to legal proceedings under the Act shall apply with necessary modifications to legal proceedings under the PDA.