Funmilayo Odude, Partner, Commercial and Energy Law Practice (CANDELP)

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Why PEBEC should facilitate intellectual property protection 12 Dec 2017


Nigerian Vice President Yemi Psinbajo (right) receiving from Nigeria Country Director, World Bank,
Rachid Benmessaoud, the Doing Business 2018 report


Nigeria has been ranked 145th out of 190 economies, in the World Bank's Ease of Doing Business Report 2018. This latest ranking is an improvement from the 169th position the country was ranked in 2016. The jump is a good achievement for the Presidential Enabling Business Environment Council (PEBEC), which had successfully implemented a 60-day National Action Plan on Ease of Doing Business in Nigeria earlier this year.
    
The 60-day plan targeted eight core areas for reform. They included: starting a business, dealing with construction permits, registering property, getting credit, payment of taxes, getting electricity, trading across borders, and entry and exit of people. In my article in the September 2017 edition of Financial Nigeria, I had expressed my wish for the inclusion of registration and protection of intellectual property in the key reforms embarked upon by PEBEC in its first 60-day National Action Plan.

News coming out from PEBEC is that a second 60-day National Action Plan (NAP 2.0) was approved by an expanded meeting of the Council on the 27th of September, 2017. The second action plan targets over sixty priority initiatives and includes additional areas for reform such as enforcing contracts, simplifying the procurement process and trading within Nigeria.

It would seem that the registration and protection of intellectual property has once again been excluded. This is quite disappointing considering its importance to promoting investment in manufacturing, creativity and entrepreneurship. There are also very urgent reforms needed to be done at the Trademarks, Patents and Design Registry in Nigeria, particularly as it concerns the registration of trademarks.

Any economy that seeks to attract foreign investment to develop local production and manufacturing capacity needs to place high premium on intellectual property protection. Foreign investors and local manufacturers desire to have this protection. According to a popular saying, ideas rule the world. This means that in a world where brands, patents and trademarks are trading items, there has to be clear and strong laws and frameworks that guide the acquisition of companies that own those items.

There are efforts currently been made by the Nigerian government to attract the technological know-how and expertise of foreign companies in our extractive industries. The government is also pushing to provide an environment for the sustainable business growth of made-in-Nigeria products. Underpinning the success of these efforts must be an easy and seamless process for the registration of intellectual property.

Registration of trademarks in Nigeria is a frustrating undertaking. The enabling law is outdated and incompatible with modern economic realities. The procedure for registration of trademarks is not strictly speaking a complicated process. Indeed, major parts of the process can ordinarily be carried out online, through a registered agent. It is the bureaucracy of the Trademarks Registry itself that creates the difficulties applicants currently face.

There are five steps for the registration of trademarks. These can be broken down thus: submission of application, acknowledgment, acceptance, publication and registration. An additional step may be required in a situation where an interested party decides to oppose the application for the registration of a trademark. This would lead to a hearing to determine if the trademark should be registered or not.  

After the submission of the application for the registration of a trademark in the prescribed format to the registry, the applicant is given an acknowledgment form. Once the trademark is approved – after it is confirmed it does not violate any existing trademark in the class in which it is sought to be registered, and a determination has been made to the effect it does not deceive, confuse and it is not scandalous, illegal or immoral – the applicant is given an acceptance form indicating that the mark has been accepted for advertisement in the Trademarks Journal.

Many applicants have only this acceptance form to show after years of application. This is because the next stage of publication is where the major problem begins. The Trademarks Act directs the Registrar of Trademarks to “from time to time” publish a Trademarks Journal. Part of the contents of this journal are notices of applications for trademarks for the purpose of notifying the public. A trademark cannot be registered in Nigeria unless it is published in the Trademarks Journal and a period of two months has elapsed without any objection or opposition to the registration of the mark. If there is an objection or opposition, it has to have been resolved in favour of the applicant for the trademark to be registered.

The publication of the Trademark Journal is irregular and inconsistent, creating a backlog of applications. Despite the high number of applications the Trademarks Registry receives monthly, it could go several months – and sometimes over a year – without a single publication. The last journal published by the Trademarks Registry is dated 2nd May, 2017. The previous journal is dated 31st March, 2016.

This unsurprisingly gives rise to a situation whereby extra steps are taken by registered agents to fast-track the publication of their clients' applications whenever the next journal is to be published. This inevitably creates an uneven playing ground for trademark practitioners, and thereby fostering corruption at the Registry.

The uncertainty of the publication of the trademark journal results in further uncertainty in the issuance of the certificate of registration. By the provisions of the Act, a certificate is to be issued at least two months after publication of the proposed trademark. There are, however, several applications awaiting the issuance of certificates months, sometimes even years, after publication.

This again encourages the corrupt system we are trying to rid our government agencies and parastatals of. It has been alleged in many quarters that the activities of the registry are intentionally made to progress at a snail's pace in order to encourage agents who are under pressure from applicants to fast-track the applications by greasing the palms of registry officials.

One of the notoriously anti-business actions of the Trademarks Registry is in relation to missing records. The registry's records are mostly kept in physical files, which must be located before any action can be taken on most trademark applications or registered trademarks. It is usually a herculean task for the officers of the registry to locate a file. Where the registry is unable to locate a trademark file, applicants can constitute temporary files using copies from their own records and the registry charges a fee for constituting these temporary files.

In essence, the registry charges applicants to remedy the consequences of its own carelessness. This is enough incentive to keep the records of the registry in the undesirable state it currently is.

The process of registration of trademark is arguably simple enough. What is missing, therefore, is the certainty PEBEC has successfully fostered with the executive orders to the Corporate Affairs Commission (CAC) and other agencies of government. A timeframe should be given for the periodic publication of the Trademark Journal. It would take a considerable amount of time to clear the current backlog of unpublished applications at the registry even if a monthly publication were to be ordered. Nevertheless, a quarterly publication of the Trademark Journal is appropriate for Nigeria after all backlogs have been cleared.

It has been suggested by some trademark practitioners that applicants should be allowed to publish themselves in newspapers or gazettes as it is done by applicants for registration of non-governmental and other non-profit organizations at the CAC. The government would most likely reject this option due to the potential loss of revenue that is supposed to accrue to it from such publications if it accepts such recommendation. In any event, the prerequisite of publication in the Trademarks Journal is provided for in statute and until an amendment of the Act is carried out, applicants can only hope for an intervention by the government.

Apart from creating certainty in the application process, it is important to decentralize the Trademark Registry. Currently, the Trademark, Patents and Designs Registry is located in Abuja without offices in any other state of the Federation. This situation does not promote ease of registration of trademarks as access to the regulatory authority is an important component when considering ease. I would suggest that offices (even if they are collecting offices) be opened in every state where the CAC has an office.

While the aim of this article is to stress the need for intervention in the bureaucracy of the Trademarks, Patents and Designs Registry, it is important to stress the need for a review of the Trademarks Act. Nigeria currently operates under the Trademarks Act of 1965 and Trademarks Regulation of 1967. There is a bill before the National Assembly, seeking to modernize and harmonize the protection of intellectual property in Nigeria as far as trademarks, patents and designs are concerned. The bill is currently known as the Industrial Properties Commission (IPCOM) Bill. It is my hope that the bill is given attention by this National Assembly.

The importance of the registration and protection of intellectual property to an emerging economy cannot be overemphasized. It has become imperative to call upon PEBEC to pay some attention to the Trademarks, Patents and Designs Registry, particularly as it relates to the registration of trademarks and to engage with the National Assembly in relation to the passage of the IPCOM Bill.

This should not be a difficult task given that the Senate President, Bukola Saraki, is passionate about promoting goods made in Nigeria. There is no better way to protect local manufacturers than providing the enabling law to protect their intellectual property.

A Financial Nigeria columnist, Funmilayo Odude is a Lagos-based legal practitioner, and a public affairs analyst.