INVESTIGATION AND ENFORCEMENT OF IP RIGHTS IN NIGERIA

Steps to a successful IP rights enforcement:

  • investigations and evidence gathering
  • Administrative enforcement
  • Online takedowns
  • Ensuring Clean distribution channel and
  • Working and authorities at the ports.

Key objectives

  • • To minimise the risk (safety and otherwise) of counterfeit products reaching consumers.
  • To reduce the availability and sale of counterfeit products, offline and online outlets
  • To disrupt and deter those engaged in the sale of counterfeit products
  • To prevent the importation of counterfeit products into Nigeria
  • To educate the consumer on the dangers of purchasing counterfeit products in order to persuade them to purchase genuine products going forward. Needs to be balanced communication, to include general awareness materials; counterfeit product alerts etc.
  • To ensure that authorised suppliers are properly engaged and monitored to ensure authenticity of their products.

Challenges

  • The consumer is, to a large extent, unaware that they are buying counterfeits.
  • Price points - consumers want low cost, not prepared to pay high cost for genuine product.
  • Preservation of intelligence gathered on raids to avoid leakage. Officials are corrupt and will tip off traders etc

Enforcement Programme

  • Need to be targeted, proportionate and timely and have the support of law enforcement agencie
  • Enforcement activity must be selected on a cases by case basis.

Investigations and evidence gathering

Gathering, collating, analysing and fast acting upon intelligence is critical to the success of an enforcement programme. The following are 3 major steps during investigation to enforcement:

  • Spotter programmes - quick sweeps of the market to check general availability of counterfeit products.
    Prior to any investigation programme starting, the investigators will be fully trained locally and will be provided with suitable product guides to enable them to identify the counterfeit products
  • Preliminary investigations and market reviews - to identify specific traders both online and offline dealing in counterfeit goods and gather evidence by conducting test purchases for the purpose of conducting administrative raids.
  • In-depth investigations to identify large scale wholesalers/manufacturers/importers of the counterfeit goods into Nigeria. Our investigators usually trace back up the supply network and identify the source/s of the counterfeits

Administrative Actions

In Nigeria, there is a legislation and an administrative agency, the Standard Organisation of Nigeria ('SON') and National Agency for Food and Drug Administration and Control, NAFDAC, are empowered to prevent the sale of/dealing in counterfeits and sub-standard goods.

SON are also empowered to prevent the sale of goods (registered and unregistered trade marks) which are of a sub-standard quality to the original of such goods which are sold in Nigeria.

While, NAFDAC is also empowered to prevent the sale of all products under the agency supervision.

Working with Nigerian Customs

The Nigerian Customs Services (the NCS) is not empowered by local IP legislation to provide for a formal Customs Recordal system nor is there any accompanying procedure for seizures. However, the NCS can be engaged to prevent the importation of counterfeit products at the border by virtue of the Common External Tariff (CET), a subsidiary legislation, which provides under Item 3 of Part 4 that importation of “all counterfeit/pirated materials or articles" into Nigeria is prohibited.

Relying on this CET provision, the general practice for brand owners in Nigeria is to enter into an MOU with the NCS and then work with the NCS to create awareness on their brands and provide capacity building. This can be achieved by lobbying with NCS, supplying identification materials and providing training to the Customs Officials on ways to distinguish the brand owner’s products from counterfeit products and on the dangers of counterfeiting.

Should relevant counterfeit products then be identified upon entry into the Nigerian ports or borders, the NCS will confiscate the goods. There is a formal inspection process (done by NCS not the brand owner) and a seizure procedure implemented. If the goods are found to be counterfeit, the NCS is empowered by CET to confiscate them. The importers of such goods may be arrested and prosecution may arise from such confiscation but this is all handled by NCS and out of the control of the rights holder. The goods may be destroyed or kept as evidence for any subsequent Court hearing. Do note that the rights holder will not be held liable for any wrongful detention should that situation arise. This is an effective system and we recommend getting the NCS on board. To effectively do that we need to have a dialogue with them, an MOU be drawn up and signed by the respective parties and then some product training given to Customs.