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The Industrial Property Commission Bill (IPCOM) and the New Trade Marks Bill: Highlights, Issues and Recommendations

posted 5 years ago

INTRODUCTION 

Over the years, efforts
have been made to promote the awareness of IP rights in Nigeria and to
sensitize the public on the various mechanisms available to protect creative
and innovative works. However, and despite the gradual uptake in IP awareness
in the country, these efforts have been hampered by inadequate and outdated
laws currently in place, many of which have not been amended or updated since
they were enacted into law many years ago. The current laws in place are
primarily the Trade Marks Act, Cap. T13, Laws of the Federation of Nigeria 2004
(based on the original 1965 Act), the Copyright Act (as amended), Cap. C28,
Laws of the Federation of Nigeria 2004 (based primarily on the 1988 version),
Patents and Designs Act, Cap. P2, Laws of the Federation of Nigeria 2004 (a
codification of the 1970 Act), the Trade Malpractices (Miscellaneous Offences)
Act, Cap. T12, Laws of the Federation of Nigeria 2004 and the Merchandise Marks
Act, Cap. M10, Laws of the Federation of Nigeria 2004 (a reproduction of the 1916
Act). Concerted attempts to comprehensively amend the laws relating to
industrial property go as far back as 1991 and although these efforts have
gained some traction over the years, nothing of tangible substance has been
accomplished in terms of effecting these proposed changes. In 2016
however, resumed efforts in the form of the Industrial Property Commission Bill
(IPCOM) was presented to the National Assembly with the aim of harmonizing all
current Intellectual Property laws and governing bodies by providing for the
establishment of the industrial property Commission of Nigeria, repealing of
the Trade Marks Act cap. T13, LFN 2004, the Patents and designs Act, cap 344,
LFN 2004 and to make comprehensive provisions for the regulation of trademarks,
patents and designs, plant varieties, animal breeders and Farmers rights and
for other related matters. The Bill has now passed the second reading at the
House of Representatives and is awaiting further legislative action. There is
also a separate Trade Mark Bill 5 which seeks to repeal the current Trade Marks
Act 1965. The Bill has passed through the first and second readings, as well as
the committee hearing which held in March 2018. The Trade Mark Bill like the
IPCOM Bill seeks to harmonize Nigerian law in tandem with international best
practices. Key Provisions in the IPCOM Bill In addition to more substantive
provisions, the IPCOM Bill provides for a separate and autonomous
administrative agency for trademark matters. 

1. The Bill provides for
the establishment of an Industrial Property Commission of Nigeria known as “the
Commission” with the establishment of a governing Council to supervise the
administration of the laws relating to industrial property and ensure rapid and
coordinated development of industrial property related issues. The new Trade
Mark Bill represents the establishment of a single law and body for the
administration of trademarks, copyright, patents and designs in Nigeria among
other necessary improvements. 

2. The Bill further
provides that the Commission shall liaise with organs of the government and
other agencies for proper enforcement of industrial property rights; monitor
and supervise Nigeria’s position in respect of international conventions
relating to industrial property matters and to advise the Government on these
matters periodically.

3. The Commission is
also empowered to make regulations generally, for the purposes of the proper
administration of industrial property law and matters relating to it, subject
to the approval of the Minister.

4. The Bill further
provides for the establishment of a Fund for the Commission from which all
expenditure of the Commission shall be defrayed. 

5. It stipulates higher
penalties and fines for infringement of trademarks. 

Key Provisions in the Trade
Mark Bill 

i. The Trade Mark Bill
provides for the registration of associated trademarks as a series. It provides
that a person may make a single application for the registration of a series of
trademarks in respect of the same goods or services, or of similar goods or
services which fall within a single class in accordance with the international
system of classification. 

ii. The extension of the
initial validity period and duration of trademark registrations from 7 years to
10 years. Registration may also be renewed for further periods of ten
years. 

iii. The powers to make
regulations to recognize and protect international trademark registrations in
Nigeria with increased protection for well-known/famous marks. 

iv. The notification of
trademark ownership rights with the Nigeria Customs Service to facilitate
seizures and destruction of counterfeit products and the establishment of
criminal liability for counterfeiters. 

v. The Bill further
provides that trademarks shall become incontestable after five years on the
register and also protects the use of trademarks on the internet. The Bill
provides that use of signs on the Internet shall constitute use in Nigeria only
if the use has a commercial effect in Nigeria. 

Furthermore, in
determining whether use of a sign on the Internet has a commercial effect in
Nigeria, the Controller shall take into account all relevant circumstances
including: 

a. circumstances
indicating what the user of the sign is doing, or has undertaken significant
plans to do business conducted in Nigeria in relation to goods or services
which are identical or similar to those for which the sign is used on the
Internet; 

b. the level and
character of commercial activity of the user in relation to Nigeria; c. the
connection of an offer of goods or services on the Internet with Nigeria; 

d. the connection of the
manner of use of the sign on the Internet with Nigeria; and e. the relation of
the use of the sign on the Internet to a right in that sign with Nigeria. 

 

6. Enlargement of the
list of actions which would constitute infringement of a registered
trademark; 

7. More suitable and
additional penalties for infringement; and 

8. Robust provisions
that cover anti-counterfeiting and trademark enforcement measures. Brief
Comparison of the Trade Marks Act , the IPCOM Bill and the Trade Mark Bill We
had earlier established that the IPCOM Bill covers Trademarks, Patents and
Designs; however, this section will highlight some similarities and differences
between the current Trade Marks Act, the IPCOM Bill and the Trade Mark Bill as
they relate to trademarks only.
·

Trademark Protection for
Services: The current Trade Marks Act does not specifically provide that
trademarks can be registered in respect of services. However, in 2007 the
Minister of Commerce, in the alleged exercise of the powers vested in him by
virtue of sections 42 and 45 of the Trade Marks Act and regulation 5 of the
Trade Mark Regulations, included Service Marks into the classification of goods
for purposes of registration of service marks in Nigeria. Consequently,
applicants have since been permitted to apply for registration of service marks
in Nigeria in Class 35 through to class 45. The uncertainty surrounding the
registration of service marks has been addressed in both section 29 of the
IPCOM Bill and section 7 of the Trade Mark Bill as both Bills explicitly
provide that a trademark can be registered in respect of goods and services.
Hitherto, applicants had sought trademark protection for their service marks
under class 16 of the classification of goods for paper and paper related
articles, with questionable validity. 

Duration and Renewal of
Trademarks: Under the Trade Marks Act, a registered trademark is valid for a
period of 7 years13 from the date of filing and each subsequent renewal will
last for 14 years; 14 while the IPCOM Bill provides that a trademark is valid
for a period of 7 years15 from the date of filing and 7 years for each
subsequent renewals. The Trade Mark Bill on the other hand, provides that a
trademark shall be registered for a period of 10 years17 from the date of
registration and further renewals shall be for a period of 10 years. Trademark
registrations in the United Kingdom, United States of America and South Africa
are valid for 10 years and subsequent renewals valid for a further 10 year
periods. There is currently a proposal for similar 10-year validity periods for
Canadian trademarks. 

Specific provisions on
Parallel Importation and Grey Markets: Although both the Trade Marks Act and
the IPCOM Bill are silent on the exhaustion of rights for trademarks, the Trade
Mark Bill20 adopts an international exhaustion regime. Sections 112(3)(f) and
114 (2)(b) of the IPCOM Bill similarly provide that rights afforded to a patent
or design respectively, will not cover “an act done in respect of a product
covered by the patent or (design) after the product has been lawfully sold in
any country”. This provision is much clearer than what is contained in the
current Patent and Designs Act, which adopts the domestic or territorial
exhaustion of rights principle.

Priority Claims for
Convention Country Applications: Section 72 of the IPCOM Bill provides that any
person who has applied for protection for any trademark in a Convention country
or the legal representative or assignee shall be entitled to registration of
such trademark under this Act in priority to other applicants; and the
registration shall have the same date as the date of the application in the
Convention country, as long as the application is made within six months from
the application for protection in the convention country. Moreover, the
proprietor of the trademark is not entitled to recover damages for
infringements occurring prior to the actual date on which the relevant trademark
is registered in Nigeria. Sections 11 and 12 of the Trade Mark Bill also make
similar provisions. Under the current Trade Marks Act, the provisions dealing
with the recognition of convention country applications never took effect due
to the restriction which made it mandatory for an executive declaration by the
President on the affected treaty countries to be published in the Federal
Gazette. Madrid Protocol: Unlike the IPCOM Bill which does not specifically
provide for domestication of the provisions of the Madrid Protocol, section 57
of the Trade Mark Bill makes specific provisions for the Minister to make
provisions to give effect to the Madrid Protocol or of any treaty, convention
arrangement or engagement relating to trademarks to which Nigeria is a party.
Nigeria is still not a member of any of the African regional IP bodies like the
ARIPO and OAPI and there are no clear indications in the proposed amendments
under review that this state of affairs is being addressed in the near
term. 

Protection of Famous/
Well-Known Marks: Section 58 of the Trade Mark Bill provides that “a well-known
trade mark is entitled to protection under this section whether or not the—(a)
trade mark has been registered in Nigeria, or an application for the
registration of the trade mark has been made to the Controller; and (b)
proprietor of the trade mark carries on business, or has any goodwill, in
Nigeria”. Section 58 (2) further entitles the proprietor of a well-known
trademark to an injunction, to restrain the use of any mark that is similar or
identical to the proprietor’s trademark in Nigeria without the proprietor’s
consent, where the use is likely to cause confusion. Notwithstanding this broad
protection for well-known marks in the Trade Mark Bill, section 59 of that bill
provides a caveat that a proprietor of such well-known trademark is not
entitled to restrain by injunction the use of well – known marks if the use; is
in accordance with honest practices in industrial or commercial matters,
constitutes fair use in comparative commercial advertising or promotion; is for
a non-commercial purpose; or is for the purpose of news reporting or news
commentary. Section 30 (4) (e) of the IPCOM Bill 2008, provides that a mark
shall not be validly registered if it is confusing similar to a well-known
trademark in Nigeria for goods or services in similar or different classes, and
where the interests of the owner of the well-known mark are likely to be
damaged by such use. The owner of a well-known mark also has the exclusive
right to prevent the use of the trademark without the required consent when the
use would result in a likelihood of confusion. 24 Section 32(3) of the IPCOM
Bill provides that “in determining whether a trade mark is well known in
Nigeria, knowledge of the trade mark in the relevant sector of the public,
including knowledge which has been obtained as a result of the promotion of the
trademark, shall be taken into account”. 

Nigeria as a country is
heavily import dependent and the protection of famous marks will provide clear
protection for international trademarks that have attained this status and also
serve to deter counterfeiters. The current Trade Mark Act is silent on the
protection of well-known marks. Despite Nigeria’s accession to the TRIPS
Agreement by virtue of its membership of the WTO, some have argued that the
provisions relating to well-known/famous trademarks are not applicable in
Nigeria since that provision is yet to be specifically enacted into local law
under Nigeria’s two-part (dualist) reception process for international treaties
and conventions. Whilst this argument loses sight of the composite nature of
the WTO multilateral trade agreements as binding on member states as a single
document, the proposed amendments introduced by the IPCOM and the Trade Mark
Bill should put this disputed matter to rest once and for all.

Dilution: Dilution is
defined in the Trade Mark Bill as the lessening of the capacity of a trademark
to identify and distinguish goods or services, regardless of whether there is
any competition between the proprietor of the trademark and any other party; or
likelihood of confusion on the part of the public. Section 9(3)(d) further
allows an application for registration of a trademark to be refused if the
application is similar to a well-known mark in Nigeria and use thereof would
cause dilution in an unfair manner of the distinctive character of the earlier
well-known trademark. The concept of dilution is a relatively new concept in
Nigeria, and it is a breath of fresh air that the Trade Mark Bill recognizes
the importance of this doctrine and its applicable legal principles. The IPCOM
Bill and the Trade Marks Act are silent on the concept of dilution. 

Use of Trademarks over
the internet: In response to the impact of emerging technologies and the
pliability and ubiquitous nature of the World Wide Web, Section 48 of the Trade
Mark Bill recognizes that use of a sign/symbol on the internet shall constitute
use in Nigeria “only if the use has a commercial effect in Nigeria”. Both IPCOM
Bill and the current Trade Marks Act do not recognize the use of marks over the
internet as proper use thereof. Although the recognition of such trademark use
should be implied under existing law, and evidence of which could also
constitute proof of publicity and advertising efforts, specific statutory
provisions are more desirable. 

Establishment of an
IPCOM Commission: Part A of the IPCOM Bill which comprises of 25 sections
establishes the Industrial Property Commission of Nigeria. The section provides
for the membership of the governing council, functions and powers of the
commission, structure of the commission, and right of appeal to the Industrial
Property Appeals Board on matters of compulsory licenses. 

RECOMMENDATIONS AND
CONCLUSION 

After a careful review
of both The IPCOM Bill 2008 and the Trade Mark Bill 2016, and while observing
that they have to a large extent addressed similar subject matter, they are
totally different in scope. The IPCOM Bill seeks to establish a commission
under Part A, and sets up a structure for that commission, the powers of the
governing body, and functions as well as jurisdictional matters and the review
process up to the appellate body. Part B deals with trademarks, Part C deals
with patents and designs while Part D addresses plant varieties and animal
breeders’ rights. The Trade Mark Bill, on the other hand, is a proposed
trademark legislation simpliciter, as it only seeks to repeal and amend the
current Trade Marks Act without touching on governing structure or the administrative
regulation of trademarks. The IPCOM Bill once passed will have a greater impact
on administrative regulation of trademarks because it will carve out the Trade
Marks Registry as a department under the Federal Ministry of Industry, Trade
and Investment and establish a similar autonomous body capable of regulation
and independent funding. The implication of this is that all the current
challenges faced by the registry with regards to funding could be avoided or
significantly minimised. The Trade Mark Bill contains more substantive
provisions, on dilution, exhaustion of rights principles, domestication of the
Madrid Protocol and the recognition of famous marks amongst other useful
provisions. We would recommend going back to the drawing board at the legislative
Committee level to attempt a harmonization of both bills. It is essential that
an extensive bill which seeks to establish a commission as well as accommodate
all the substantive provisions contained in the Trade Mark Bill is adopted; or
we find a way of merging both bills into one, after excluding surplusage and
repeated/identical provisions. Since the Trade Mark Bill has passed the public
hearing stage and is now at the committee level and the IPCOM Bill 2008 is
still at the public hearing stage, it is recommended that a provision for the
establishment of a commission is inserted into the Trade Mark Bill going
forward. Otherwise, the same challenges are likely to surface in a few years
when the overwhelming necessity for a commission becomes evident. An
alternative solution is to have the Trade Mark Bill passed as it is, while only
Part A of the IPCOM Bill should be passed into law. Part B should be eliminated
while Parts C-D should be enacted along with Part A or separately. There is no
doubt that the establishment of a commission is necessary, however, the IPCOM
Bill as it is appears unnecessary and grossly inadequate in relation to
trademark matters in view of the more comprehensive treatment envisaged under
the new Trade Mark Bill. 

 Source: https://bit.ly/2LTu7c0

For further information
on this article and area of law, please contact John Onyido / Yetunde Okojie /
Oluwasolape Owoyemi at: S. P. A. Ajibade & Co., Lagos by telephone (+234 1
472 9890), fax (+234 1 4605092) or email ([email protected]; [email protected];
[email protected]). 

www.spaajibade.com 

 

Author

posted 6 days ago

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