Following the lockdown order
issued by the President of the Federal Republic of Nigeria in Lagos, Abuja and
Ogun States to combat the spread of COVID-19 pandemic, businesses and offices
including intellectual property offices and courts in these jurisdictions have
been mandated to substantially suspend operations. It is no longer business as
usual and it is expected that this event will impact the protection and
enforcement of intellectual property rights such as copyrights, trade secrets,
trademarks, patents, and industrial designs in Nigeria in various ways. The major
IP protection system likely to be affected include the IP registration and
enforcement systems highlighted below.
IP Registration System
One of the methods of
protecting rights to inventions, industrial designs and trademarks in Nigeria
is through the registration process.[2] Owners of these rights may
experience challenges in prosecuting applications for registration and renewal
at the Trade Marks, Patents & Designs Registry (Registry), and complying
with timelines for performing obligations stipulated in the Trade Marks Act[3] (TMA) and Patents & Designs Act[4] (PDA) during the lockdown period and
after the lockdown is lifted. Copyright and trade secrets protection may not be
affected under the registration system as rights holders do not require
registration or periodic renewals to maintain rights over them.[5] However, the Nigerian Copyright
Commission (Commission) established a voluntary electronic database
for owners of copyrights to notify the Commission of their creations in
order to maintain an effective archive of local copyrighted works.[6] Although the Registry and Commission
are closed, they both have online platforms for registration which IP owners
may utilize this season.[7] Some of the possible effects of the
closure of IP offices include a reduction in the number of IP applications
filed at the Registry, delays in registration of IP rights and extension of the
deadlines stipulated in the TMA & PDA.
(a)
Reduction in IP Applications
There is likely to be a
reduction in the number of trademark, patent and design applications for
registration, renewal, and recordation filed at the Registry and applications
for lodging copyright notifications at the Commission due to depletion in
economic activities.[8] Despite the presence of an online
platform, the Registry and Commission may receive fewer applications this
period and it is not certain that these applications will be attended to due to
closure of the offices, where further administrative steps are required.
(b)
Extension of deadlines
Deadlines for filing
applications or doing any act stipulated in the TMA and PDA may require
adjustments as it may be impossible for IP owners/applicants to comply with the
applicable timelines especially if this falls within the lockdown period.
According to the Trade Mark Regulations (Regulation),[9] where deadlines for doing any
particular act stipulated in the TMA or the Regulation falls on a day the
Registry is not open, it will be lawful for any person to do such act on the
first day the Registry reopens its office.[10] Based on this provision, it should
be lawful for IP owners/applicants to file applications for
registration/renewal, or do any other act required by the TMA or the Regulation
on the day the Trade Marks Registry resumes operations. The Regulation also
stipulates that the Registrar may grant an extension of time for doing any act
if the time for doing the act is not stipulated in the TMA and not prescribed
by Regulation 78 or 81.[11] The Registrar must also be
satisfied that the circumstances justify an extension of the time for
compliance.[12] Hence, an extension of time may
only be granted by the Registrar for performing acts stipulated in the
Regulation except acts stipulated in Regulation 78 or 81 of the Regulation,
where the time for doing the acts is not expressly contained in the TMA.[13]
For designs, an applicant
may apply for an extension of time where an application for registration of a
design is not completed within twelve months of the date of filing which may be
rejected if the applicant does not submit an application for extension of time.[14] The Registrar
may allow such extensions subject to any conditions
he may impose.[15] Furthermore, an application for
registration will be rejected if it is not completed within fifteen months from
the date of filing due to the default of the applicant.[16] Although the PDA stipulates
that a patent shall lapse if the prescribed annual fees are not duly paid, it
gives a grace period of six months within which the annual fees may be made, if
the fees and any prescribed surcharge are paid within that period.[17]
In addition to the grace
periods mentioned above for applicants to comply with stipulated timelines, it
may be necessary for the Registrar of Trade Marks and Registrar of Patents and
Designs to extend deadlines provided for doing required acts, or stay all
deadlines pending when the lockdown order has been lifted. Some IP offices in
other jurisdictions have extended deadlines for filing trademark documents. For
instance, the United States Patent and Trademark Office (USPTO) has extended
the time within which certain trademark-related documents may be filed. [18] The Director of the USPTO stated
that persons that are unable to meet trademark-related deadlines due to the
COVID-19 outbreak would be granted a 30-day extension for deadlines that fall
between 27th March and 30th April 2020.[19] The Italian Patent and Trademark
Office has also provided a stay of all official deadlines falling within 9th March
and 3rd April 2020.[20] Similarly, the UK Intellectual
Property Office (UKIPO) stated that it will extend deadlines where national and
international legislation allows.[21] The UKIPO also mentioned that where
a deadline has been missed, which results in a loss of rights, they may be able
to restore or reinstate the right depending on the circumstances of each case.[22]
(c)
Delay in Processing Registration
After the pandemic, the
registry may experience delays in processing applications due to backlogs of
applications accrued during the pandemic and influx of new applications after
the pandemic. In light of this, it may be imperative for IP owners to leverage
alternative modes of protecting their IP rights during the pendency of their
applications at the Registry.[23]
IP Enforcement System
IP Rights may be enforced
through the court system by instituting actions for infringement including
passing-off and misappropriation of trade secret actions at the Federal High
Court (FHC).[24] IP rights may also be enforced by
appealing the decision of the Registrar of Trade Marks, at the FHC via an
action for judicial review. Furthermore, trademark rights may also be enforced
through opposition proceedings which are heard by the Registrar of Trade Marks.
Some of the possible effects of the pandemic on the local IP enforcement system
include adjournment of existing matters, extension of deadlines for filing
actions/appeals, and delays in court/opposition proceedings and hearings.
(a)
Adjournment of existing matters and Extension of deadlines for filing
actions/appeals
Court proceedings may be
affected due to the COVID-19 pandemic as court sittings have been suspended and
only court matters that are urgent, essential or time-bound according to our
extant law can be heard, in line with the Chief Justice of Nigeria’s circular.[25] Due to this, parties involved in IP
disputes or who intend to commence an action or appeal at the FHC may not be
able to institute such actions at this time and meet the deadline for
instituting such actions and appealing the decision of the Registrar of Trade
Marks, at the FHC via an action for judicial review. For instance, Order 53
Rule 2 (2) of the Federal High Court (Civil Procedure) Rules 2019 stipulates
that a notice of motion by which an appeal is brought shall be entered
within (30) days after the date of the order, determination or other decision
against which the appeal is brought. Where the 30-day limitation
period falls within the lockdown period, it may be impossible for an appellant
to institute such action within time. In view of this, the Chief Justice of
Nigeria is expected to issue a further directive on compliance with prescribed
timelines for filing processes and institution of actions, and issuance of new
hearing dates.[26]
In addition to its
administrative duties, the Registrar of Trade Marks also performs
quasi-judicial duties. The Trade Marks Registry provides a forum for IP rights
holders or interested parties to contest the ownership of trademarks under
consideration through the opposition process. The outcome of an opposition
determines whether a trademark will be registered.
The TMA and Regulation
provide timelines within which opposition processes should be filed at the
Registry. According to the TMA, after a Trade Marks Journal has been published,
any person (opponent) may give a notice of opposition to the Registrar within
two-months from the date the journal was published, after which an applicant is
required to respond with a counterstatement within one month after the date on
which the copy of the notice of opposition is received.[27] If the applicant does not file a
counterstatement, it will be taken that the applicant has abandoned its
application.[28] Upon receipt of a counterstatement
by the opponent, the opponent is required to leave with the Registrar evidence
by way of statutory declaration in support of such opposition as initiated.[29] If an opponent leaves no evidence,
then unless the Registrar directs otherwise the opponent shall be deemed to have
abandoned the opposition.[30] Where the opponent leaves evidence,
the applicant is also required to leave with the Registrar such evidence by way
of statutory declaration within one month from the receipt of the copies of
opponent’s declarations.[31] Based on Regulation 105 of the
Regulation, where the Registry is not open on the day a process should be
filed, the processes may be filed on the first day following the excluded day
which in this case would be after the lockdown order has been revoked. Such
affected person may also apply for an extension of time to file its statutory
declaration only, as an extension of time may only be granted where the period
given for doing an act is not contained in the TMA. The period within which a
statutory declaration should be filed is not contained in the TMA but it is
stipulated in the Regulation. However, the decision of whether parties may
apply for an extension of time to file opposition processes after the pandemic
may be subject to the directive of the Registrar. The power of the Registrar to
extend time is also buttressed in Regulation 52 which provides that if an
opponent does not file a statutory declaration, he shall, unless the Registrar
otherwise directs, be deemed to have abandoned his application. In Nabisco
Inc. v. Allied Biscuits Company Ltd[32] the Supreme Court held that where
an opponent as in this case failed to file a statutory declaration as provided
in Regulation 51, by virtue of Regulation 52, he is deemed to have abandoned
his opposition unless the Registrar otherwise directs. The Supreme
Court further held that although the order of the Registrar is badly and
inelegantly worded, it was in exercise of the discretion conferred on him by
Regulation 52.
Considering the
impossibility of hearing opposition matters, it may be necessary for the
Registry to issue new dates for hearing matters that had been scheduled to be
heard during the lockdown, as well as time prescribed by the Act for initiating
oppositions.
(b)
Delay in Court and Opposition Proceedings
There are likely to be
delays in hearing court and opposition matters due to suspension of court
sitting and opposition matters. The FHC may experience challenges in hearing
both the old and new matters expeditiously considering the current heavy
workload of the court. Matters which should have been instituted during the
lockdown period will now be filed after the lockdown order has been revoked.
There is an urgent need for the Nigerian justice delivery sector, including the
Trade Marks Registry, to consider adoption of virtual hearings which could also
be utilized during unforeseen incidents such as the COVID-19 pandemic.
Conclusion
Although courts in other
jurisdictions have suspended oral hearings, some have adopted the use of
virtual hearings during this crisis. The UK Supreme Court and Judicial
Committee of the Privy Council will hear all matters and deliver judgments
through video conferencing.[33] Similarly, in Kenya pending
judgments and rulings would be delivered via Skye and by emails.[34] The COVID-19 pandemic will certainly
impact the registration and enforcement system for protecting IP rights in
Nigeria and IP offices including courts may be required to come up with
measures to ameliorate the effect on the system. In view of this, it may be
expedient for IP owners to explore alternative modes of acquiring rights over
their intellectual property and alternative dispute resolution mechanisms for
enforcing their rights post COVID-19.
___________________________________________________________________
For further information on
this article and area of law, please contact Bisola Scott at:
S. P. A. Ajibade & Co.,
Lagos by telephone (+234.1.460.5091, 460.5092),
Mobile (+234.817.939.0319;
+234.811.389. 8102) or
Email (bscott@spaajibade.com)
[1] Bisola
Scott, Associate Intellectual Property & Technology Department, SPA Ajibade
& Co., Lagos, NIGERIA.
[2]
In addition to registration, trademarks may also be protected through use. See
section 7 Trade Marks Act Trade Marks Act Cap T 13, Laws of the Federation of
Nigeria 2004. Inventions may also be protected as trade secrets and copyright.
[3]
Cap T 13, Laws of the Federation of Nigeria 2004 (TMA).
[4]
Cap. P2, Laws of the Federation of Nigeria 2004 (PDA).
[5]
There is no statutory requirement for registration of copyright. Trade secret
protection is not a statutorily recognized right in Nigeria; however, it is
recognized and enforceable under the common law. Owners of trade secrets have
to take reasonable measures to maintain their secrecy.
[6]
See the Nigerian Copyright Commission website, available at: http://www.eregistration.copyright.gov.ng/ncc/about,
accessed on 10th May 2019.
7
Applicants can only obtain acknowledgement forms through the trademark
electronic filing platform at this time.
[8] The
organisations exempted include hospitals and all related medical
establishments, health care related manufacturing and distribution, food
processing, distribution, and retail companies, petroleum distribution and
retail entities, power generation, transmission, and distribution
companies; private security companies and; workers in
telecommunication companies, broadcasters, print, and electronic media. See
COVID 19 Regulation 2020, https://pwcnigeria.typepad.com/files/fg-covid-19-regualtions.pdf accessed
on 14th April 2020.
[9]
1967, T 13, Laws of the Federation of Nigeria 2004 (TMR).
[10]
Regulation 105 Trade Marks Regulation 1967, T 13, Laws of the Federation of
Nigeria 2004 (TMR).
[11]
Regulation 105 TMR.
[12]
Ibid.
[13]
See Nabisco Inc. v. Allied Biscuits Company Ltd (1998) 10 NWLR (Pt.568)16.
[14]
Rule 29 Design Rules, Subsidiary legislation to the Patents and Designs Act,
Cap. P2, Laws of the Federation of Nigeria 2004.
[15]
Ibid.
[16]
Ibid.
[17]
Section 7 (1) (2) a & b Patents and Designs Act, Cap. P2, Laws of the
Federation of Nigeria 2004 (PDA).
[18]
Raisa Dyadkina, USPTO Extends Trademark-Related Timing Deadlines under
the CARES Act, as Other National Trademark Offices Extend their Timing
Deadlines or Provide Notice of Delays, available at https://www.lexology.com/library/detail.aspx?g=65d628ad-487c-457c-9b4e-9e66236b7122&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+General+section&utm_campaign=Lexology+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2020-04-13&utm_term=,
accessed on 13th April 2020.
[19]
Ibid.
[20]
The stay is for deadlines which involve activities with the Italian Patent and
Trademark Office, except mandatory deadlines in opposition proceedings. JD
SUPRA, Covid-19 IP Update: Intellectual Property Office
developments, available at https://www.jdsupra.com/legalnews/covid-19-ip-update-intellectual-52898/
[21]
Ibid.
[22]
Ibid.
[23]
For recommended ways of protecting pending trademarks, visit https://www.mondaq.com/Nigeria/Intellectual-Property/740682/Recommended-Ways-To-Protect-Pending-Trademarks-In-Nigeria.
Invention may also be protected as trade secrets and copyrights.
[24]
Court actions may be civil or criminal in nature.
[25]
See COVID 19 Regulation 2020, https://pwcnigeria.typepad.com/files/fg-covid-19-regualtions.pdf accessed
on 14th April 2020.
25
Kolawole Mayomi et al, Covid-19 Pandemic, Lockdown of Court Registries
and Filing of Suits: Should the Limitation Laws be Suspended? available
at http://www.spaajibade.com/resources/wp-content/uploads/2020/04/DisputeResolution.Covid-19-Suspension-of-Limitation-of-Time.pdf,,
accessed on 20th April 2020.
[27]
Section 20 (1) TMA.
[28]
Section 20(3) TMA.
[29]
Reg. 51 Regulation.
[30]
Reg. 52 Regulation.
[31]
Ibid.
[32]
(1998) 10 NWLR (Pt.568)16.
[33]
Reuters, UK supreme court switches to video conferencing, available
at
https://www.reuters.com/article/health-coronavirus-britain-courts/uk-supreme-court-switches-to-video-conferencing-idUSS8N28M0IT,
accessed on 15th April 2020.
[34]
Techweez, Kenya’s Judiciary is using Email and Videochat to Deliver Pending
Judgements and Rulings, available at https://techweez.com/2020/04/01/judiciary-using-email-and-video-chat-to-deliver-judgements/,
accessed on 16th April 2020.
Source: www.spaajibade.com