The Nigerian Patents
& Designs Act provides that “any combination of lines and/or
colours and three-dimensional form whether or not associated with colours is an
industrial design, if it is intended by the creator to be used as a model or
pattern to be multiplied by industrial process and is not intended solely to
obtain a technical result.” Industrial designs are the ornamental or
aesthetic aspect of an article and include three dimensional features, such as
the shape of an article and two dimensional features, such as patterns, lines
and colours. They are usually applied to products to enhance their
appearance with the intention of hopefully influencing a buyer’s purchase
decision.

In Nigeria, an industrial
design can be protected by registration, with the Nigerian Patents and Designs
Registry. The Patents and Designs Act governs the registration of
industrial designs and according to the Act, an industrial design is
registrable if it is new and not contrary to public order or morality.

An industrial design is
new if it has not been made available to the public before an application for
registration is filed at the registry. For instance, if it has been advertised,
it will not be regarded as new as it has become part of the public domain. It
will also not be regarded as new if it is similar to an existing design and the
difference between the design and the existing design is insignificant, or
because the product to which the design is applied is different from that of an
existing design. According to the Act, an industrial design would not be
deemed to have been made available to the public, in the following instances:

1.      If the
applicant can show to the satisfaction of the Registrar of Patents and Designs
that the creator of the design could not have known that it had been made
available to the public before the date of the application.

2.      Where
the creator had exhibited the design in an official or officially recognized
exhibition within the period of six months preceding the filing of the
application for registration.

In addition to the
requirement of newness, a design will not be registrable in Nigeria if it is
contrary to public order or public morality. An industrial design is
contrary to public order or morality if the design is inconsistent with the
moral and ethical standards recognized in Nigeria including its objectives such
as good government, the administration of justice, public services, national
economic policy and the proper interest of the state and society.

Industrial designs are
created as models or patterns to be multiplied by industrial process and not
intended to achieve a technical result i.e. relate to or improve on the
functional feature of a product without which the product cannot perform its
functions. Hence, if a design relates to a functional feature or improves
on the functionality of a product, it will not be registrable as an industrial
design and is more suitable for patent protection. In Amp v Utilux, the
court held that the shape of an electrical terminal for washing machines which
were dictated solely by its features and would attract customers because of its
functions and not because of an attraction to its shape.

Also, to qualify for
registration as an industrial design, a design must be created with the
intention to be multiplied by industrial process i.e. replicated by
industrial means and where a design is not intended to be multiplied by an industrial
process, it may be suitable for copyright protection. An example of a
design that is suitable for copyright protection are works of art such as
sculpture, drawing and carving.

An application for
registration of an industrial design shall be made to the Registrar and should
contain the following items:

1.     
a request for registration of the design;

2.     
the applicant’s full name and address and, if that address is
outside Nigeria,

3.     
an address for service in Nigeria;

4.     
a specimen of the design or a photographic or graphic
representation of the design with any printing block or other means of
reproduction from which the representation was derived;

5.     
an indication of the kind of product (or, where a classification
has been prescribed, the class of product) for which the design will be used;
and

6.     
such other matter as may be prescribed;

The application should be accompanied by the following items:

1.      the
prescribed fee.

2.      where
the true creator is not the person who filed the application, a declaration
signed by the true creator requesting that his name be included in the Register
of designs.

3.      a
signed power of attorney if it is filed by an agent.

The application will be
examined by the Registrar as to whether it is contrary to public order or
morality and contains the items stipulated above. The Registrar will
approve the registration if he is satisfied that the application complies with
the requirements without further examination as to whether the registration
might be contrary to the requirement of newness. Once it is registered,
the applicant will be issued a certificate of registration. The registration
subsists for five years from the date of the application and may be renewed for
two further consecutive periods of five years upon payment of the prescribed
fee.

The Design Rules
stipulates that where a design contains a portrait of the President, member of
the National Assembly, or a reproduction of the armorial bearings, insignia,
orders of chivalry, decorations or flags of any country, state, city, borough,
town, place, society, body corporate, institution or person, the applicant will
be required to provide an evidence of consent to register and use them. The
Registrar may refuse to register the design if the evidence of consent is not
provided. Also, where the name or portrait of a living person appears on a
design, the applicant would also be required to provide evidence of consent
from such person to the Registrar and in the case of a deceased person,
evidence of consent from his personal representatives.

Industrial designs that
are intended to be applied to the following articles are excluded from
registration:

1.     
works of sculpture other than casts or models used or intended
to be used as models or patterns to be multiplied by any industrial process;

2.     
wall plaques and medals; and

3.     
printed matter primarily of a literary or artistic character,
including book jackets, calendars, certificates, coupons, dressmaking patterns,
greeting cards, leaflets, maps, plans, postcards, stamps, trade advertisements,
trade forms, and cards transfers and the like.

An applicant may elect
that the design be kept secret for a maximum period of twelve months from the
date of the application. Where the applicant elects this, the specimen of
the design and kind or class of product which the design will be applied to
will be enclosed in a sealed package. The package will be opened by the
Registrar when the period of non-disclosure has elapsed, the applicant requests
that the application be disclosed or when the expiration period of twelve
months has elapsed.

The right to registration
of an industrial design vests in the person who is the first to file, even if
he is not the true creator of the design. The registration confers upon
the registered owner the right to restrict a third party from doing the
following acts:

1.     
reproducing the design in the manufacture of a product,

2.     
importing, selling or utilizing for commercial purposes a
product reproducing the design; and

3.      holding
such a product for the purpose of selling it or of utilizing it for commercial
purposes the following acts.

This article is intended
to convey general information and not intended to give legal advice. Questions
about any legal matter should be referred to a lawyer for professional guidance
and advice.

For further information
on this article and area of law,

please
contact Bisola Scott at S. P. A. Ajibade & Co., Lagos by

Telephone
(+234.1.270.3009; +234.1.460.5091) Fax (+234 1 4605092)

Mobile
(+234.811.389.8102, +234.817.939.0319)

Email: bscott@spaajibade.com

www.spaajibade.com