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How Creatives Can Protect their Intellectual Property Rights | Adedunmade Onibokun

How Creatives Can Protect their Intellectual Property Rights | Adedunmade Onibokun

by | Feb 2, 2018 | Uncategorized

 As an Artist,
Inventor, Photographer or a member of the creative industry, it takes a lot of
effort, skill and hard work to do what you do and it is a reasonable expectation
to be paid for your work. However, once work is made available to the public,
the chances of someone claiming the work as their own or reproducing it without
giving proper credit is extremely high in today’s technologically advanced and
share-friendly culture. Nothing is more infuriating than discovering that your
creative ability is being exploited by someone who has neither the permission
nor the right to do so.

Adequately
curbing piracy in Nigeria still requires a lot of effort despite the spirited actions
of several government agencies. Truth is, there really is no actual patent or
copyright police, roaming the streets on behalf of Creatives and looking to
investigate piracy, except for the few police raids on centers known for
selling or making pirated works.  Most Creatives
therefore usually enforce their rights, themselves though our non – evolving laws
and the inadequacies of judicial enforcement are not encouraging.  
To protect your
Intellectual Property Rights (IPRs), the first thing to note is registration with
the relevant authority. IPRs are governed by the Trademarks Act, the Patents
and Designs Act, the Merchandise Marks Act and the Copyright Act, in
addition to the principles of common law.
The Trademarks Act
A trademark
consists of any word, symbol, or device used to distinguish the company’s goods
or services. A trademark is a recognizable sign, design, or expression which identifies
products or services of a particular source from those of others. The Act
provides that no
person shall be entitled to institute any proceeding to prevent, or to recover
damages for, the infringement of a trade mark except it is registered.
The Patents and Designs Act
The Act
provides that an invention is patentable if it is new, results from inventive
activity and is capable of industrial application; or if it constitutes an
improvement upon a patented invention. Patents protect ideas that are novel,
useful, and non-obvious. When a patent expires which is usually about 20 years,
the item or process enters the public domain. Until that time, a patent holder
can prevent unauthorized use, manufacture, or sale of the invention. 
The Merchandise Marks Act
The Act relates
to fraudulent marks on merchandise and provides in Section 3, that anyone who
forges a trademark or assigns on goods a false trademark with intent to deceive
or has in his possession forged goods for sale shall be liable- on conviction before a High Court to imprisonment for a term of two years,
or to a fine, or to both and on summary conviction before a magistrate court to
imprisonment for a term of six months or to a fine.
The Copyright Act
Copyright law
protects the creative expression of ideas. Ideas themselves may be protected by
patents, not copyrighted. Any creative work that has been fixed in a tangible
medium of expression, such as paper, software, or film, and that can be
reproduced or otherwise communicated exactly is automatically protected by
copyright law. Examples include art, songs, movies and writings. The digital
world is boundless and to protect a copyright, an artist may have to use
digital watermarks on their creations and put up a copyright notice on the web
page where your work is displayed.
How to enforce IPRs
Having
registered your intellectual property, whether trademarks, copyrights or
patents; enforcing your legal rights against any person who may have infringed
on them is the second step to protecting your IPRs. IPRs are protected through
the registration of rights with the relevant registries and regulatory bodies
established by the Nigerian Government, such as the Trademarks, Patent and
Designs Registry. the Nigerian Copyright Commission (NCC), as well as other
related offices, such as the National Office for Technology Acquisition and
Promotion (NOTAP), the Standard Organization of Nigeria, and the National
Agency for Food and Drug Administration and Control (NAFDAC). All these offices
run their independent registries and often interface in the discharge of their
mandate.  

·       
National Agency For
Food And Drug Administration And Control (NAFDAC)
NAFDAC is
empowered to regulate and control the importation, exportation, manufacture,
advertisement, distribution, sale and use of food, drugs, cosmetics, medical
devices, packaged water and chemicals, generally known as regulated products. Under
the provisions of various regulations and guidelines on registration, the
submission of evidence of ownership of trademark is a condition precedent for
the registration of branded regulated products. Where an infringed trademark is
used in respect of a product that is within the purview of NAFDAC powers, a
petition can be presented to NAFDAC in that respect.
·       
 The Nigeria Copyright Commission (NCC)
The role of the
NCC is limited to works which are eligible for copyright protection under the
Act. It is the agency responsible for the enforcement of the Copyright Law in
Nigeria, carrying out raids and seizing items that are pirated, prosecuting
perpetrators and convicting them with copyright infringement. If a copyright is
infringed, a petition can be made to the NCC on registered copyrights.
·       
 Nigerian Customs Service
The new fiscal
policy of Nigeria, as contained in the Common External Tariff for 2008–2012
Schedule 4, provides the list of goods which are absolutely prohibited from
being imported. Specifically, Item 3 prohibits the importation of “all
counterfeited/pirated materials or articles including base or counterfeit coin
of any country.”
·       
 The Nigerian Police
Section 4 of
the Police Act provides for the general duties of the police and one of such
duties is the prevention
and detection of crime and the apprehension of offenders. As such crimes
bothering on criminal infringement of IPRs can be reported to the Police.
·       
 The Nigerian Intellectual Property Office (IPO)
The IPO is an
arm of the Commercial Law Department under the Ministry of Trade and
Investment, and is also known as the Nigerian Trademarks, Patent and Designs
Registry. Applications challenging the grant of Trademarks either before or
after such registration can be made to the IPO.
·       
The Federal High Court
The Federal High
Court is the court with jurisdiction to enforce IPRs and civil proceedings for
infringements can be instituted at the Federal High Court against any offender.
The Federal High court is also vested with the authority to hear criminal
matters bothering on the infringement of IPRs.
It is
important that in Nigeria, there are several pieces of work that do not fall
under the protection of IPRs in Nigeria, including the style designs of fashion
designers, therefore a designer such as Ugo
Monye who made the popular native attire Ebuka Obi-Uchendu wore
cannot claim damages or infringement against any other designer who recreates
the outfit.
There
continues to be a call for a reform of Nigeria’s IP laws as most of the current
legislations are old and do not conform with today’s reality.
If you will like to read further on how to
legally protect your business or startup, here are 10
tips.

Adedunmade Onibokun
www.adedunmadeonibokun.com
info@adedunmadeonibokun.com
Adetola Adeleye. (2016). INTELLECTUAL
PROPERTY RIGHTS ENFORCEMENT IN NIGERIA: REGULATORY AGENCIES TO THE RESCUE.Available:
http://pennjil.com/intellectual-property-rights-enforcement-in-nigeria-regulatory-agencies-to-the-rescue/.
Last accessed 2nd Feb, 2018 .
 Ray
Dickinson. (2017). What Can You Protect? Types of Intellectual
Property. Available: http://edwardlowe.org/what-can-you-protect-types-of-intellectual-property/.
Last accessed 2nd Feb, 2018.
Photo Credit – Pic 1 – www.guardianng.com ; Pic 2 – www.lindaikejisblog.com 

NOTE: Please
note that this article is strictly for educational purposes and not for
commercial purposes. If you have any comments or remarks you may contact the
author. 
How to register a patent in Nigeria | Adedunmade Onibokun

How to register a patent in Nigeria | Adedunmade Onibokun

by | Jun 6, 2017 | Uncategorized


A Patent is an official
right to be the only person to make, use or sell a product or an invention. The
essence of a patent is to protect inventors by ensuring they get due
recognition and compensation for their efforts in inventing. A patent usually
covers new and ground breaking inventions which could be in any industry and
not necessarily in the sciences alone.


A patent confers upon the
patentee the right to preclude any other person from doing any of the following
acts-

 a)     where
the patent has been granted in respect of a product, the act of making,
importing, selling or using the product, or stocking it for the purpose of sale
or use; and
b)
     where the patent has been granted in
respect of a process, the act of applying the process or doing, in respect of a
product obtained directly by means of the process, any other acts mentioned
above.

That’s why various
governments have made it a point of duty to support and protect the rights of
inventors through patents. In Nigeria, a patent is registerable at the Ministry
of Trade and Investment located in Abuja.

The application for patent
registration begins with a search to ascertain whether such innovation or
invention had been created by another person in the past. This is then followed
by an application for registration. The Applicant must include other vital
information such as; the applicant’s full name and address; a specification,
including a claim or claims in duplicate; plans and drawings, if any, in
duplicate; where appropriate, a declaration signed by the true inventor
requesting that he be mentioned as such in the patent and giving his name and
address; a signed power of attorney or authorization of agent if the
application is made by an agent; an address for service in Nigeria if the
applicant’s address is outside Nigeria; and The prescribed fee.

It is important to note
that a patent shall stay valid for 20 years, after which other manufacturers
may have access to the creation or be legally able to create another version in
itself.  An inventor who has registered a
patent in another country can also re-register the patent in Nigeria. Such
inventor will be requested to append to his application a written declaration
showing the date and number of the earlier application, the country in which
the earlier application was made, and the name of the applicant who made the
earlier application. The applicant will be expected to furnish the Registrar,
not more than three months after the making of the application in the initial country
with a copy of the earlier application certified correct by the Industrial
Property Office (or its equivalent) in the country where the earlier
application was made.

A patent shall also lapse
if the prescribed annual fees are not duly paid in respect of it, provided that
a grace period of six (6) months shall be allowed for the payment of the fees;
and if the fees and the prescribed surcharge are paid within that period, the
patent shall continue as if the fees had been duly paid.

Many inventors have not
had the benefit of registering their inventions. This may result in a loss of
ownership by these inventors or a situation where the invention is registered
by someone else who is not the rightful creator of that invention.

If you have any enquires about
registering a patent or trademark in Nigeria. You may contact the undersigned
via info@adedunmadeonibokun.com
or via www.adedunmadeonibokun.com

Adedunmade Onibokun & Co.
Solicitors & Advocates
info@adedunmadeonibokun.com
www.adedunmadeonibokun.com

+2348055424566 

Photo Credit – www.insidecounsel.com 
Franchising: A Pathway To Entrepreneurial Success In Nigeria – Franklin Okeke

Franchising: A Pathway To Entrepreneurial Success In Nigeria – Franklin Okeke

by | Sep 5, 2016 | Uncategorized



Franchising is a
business model that businesses use to expand their brand and operational
footprint. A franchisor is a company, business or person that has developed a
system/name and grants a third party the right to operate a business under the
system and name in consideration of fees from the third party. According to the
International Franchise Association, a franchise is “the agreement or license between two legally independent parties which
gives: a person or group of people (franchisee) the right to market a product
or service using the trademark or trade name of another business (franchisor);
the franchisee the right to market a product or service using the trademark or
trade name of another business.’’ The essence is to enable the franchisee
enjoy commercial success in his business by ‘riding on the coat tails’ of the
franchisor. There is usually a fee (the ‘franchise fee’ or royalty) attached to
the use of the system.  

There is a popular
saying that owning a franchise allows you to
go into a business for yourself, but not by yourself. The advantages of
franchising includes – access to an established product or service which
already enjoys widespread brand-name recognition, effectively  giving the franchisee the benefits of a
pre-sold customer base which would ordinarily take years to establish, thereby significantly
increasing his prospect  of success. It provides
franchisees with a certain level of independence where they can operate their
business, and offer consumers the attraction of a certain level of quality and
consistency mandated by the franchise agreement. The franchisee is willing to
pay for association with time tested and trusted products and methods (which
would otherwise take him years to create), through the franchise arrangement.
Some examples of
franchises in the quick service restaurant (QSR) sector in Nigeria include: Mr.
Biggs’, Domino’s Pizza, Chicken Republic, Kentucky Fried Chicken (KFC),
Debonair’s Pizza, Tastee Fried Chicken (TFC) and Tantalizers. Four of the above
examples are homegrown Nigerian brands.
STRUCTURE
AND CONSTRUCT OF A FRANCHISE AGREEMENT
A franchise
agreement (FA) by its complex and technical nature is accompanied by a bundle
of Intellectual Property (IP) rights (trademarks, service names, patent,
designs, technological know-how etc.), which are protected and regulated not
only by the FA between the parties, but also by relevant laws regulating the
transfer of such, especially where there are cross border dimensions. The IP
rights are the basis upon which the FA is built because a franchisor would be
unwilling to enter into an FA if it feels its IP rights would not be adequately
protected.
Issues can arise regarding
the impact of a franchisor’s bankruptcy or liquidation on the FA and its
resultant effect on the franchisee. What would be the fate of the IP rights vis-à-vis the franchisee’s interest? If
a liquidator is appointed over the franchisor company, the liquidator takes
control of the company and can enforce its rights against franchisees. The
franchisee must continue to pay the agreed fees and adhere to the franchise
system. 
The role of the Liquidator
would be to sell the franchisor company to a third party or in the alternative
sell the assets of the franchisor which includes the IP rights. If the franchisor
company is sold to a third party (which is more preferable), then the FAs could
be assigned to the new owner and the franchisees can continue to do business as
usual. On the other hand, if the assets of the franchisor are sold, nothing
prevents the franchisee(s) from acquiring the IP Rights. It must be stated that
an FA does not terminate simply because the franchisor has gone into
liquidation. This is however subject to the express terms of the Agreement.
Franchise lawyers
spend a considerable amount of time drafting and negotiating FAs, since the FA is
the cornerstone of the franchise relationship and is likely to be in place for
a number of years. While no two FAs may be  identical, most include provisions such as the
grant of a trademark license, the right to operate the franchised business,
payment of fees, terms of the rights granted, limitations on how the franchisee
can use the franchisor’s trademarks, indemnity clauses, operational standards
and specifications, reporting requirements, default, termination,
post-termination obligations, non-compete clauses and disclosure of
confidential information, and procedures for dispute resolution.
However, these
clauses are subject to judicial interpretation. In Canada, the court recently
held that a ‘non-compete’ clause in an FA may not be enforceable in all
circumstances against the franchisee. A non-compete clause is a clause which
estops a party from engaging in a business similar in nature to that which the
particular agreement is centred upon. In an FA, these clauses are used to
ensure that the franchisee does not, with the know-how obtained from the
franchisor during the course of the relationship, operate a business which
would be in unfair competition with the franchisor and other subsequent
franchisees. However, a recent Canadian decision seem to suggest that the fact
that there is a non-compete clause in a franchise agreement, does not make it
enforceable. The Ontario Court of Appeal, in MEDIchair LP v DME Medequip Inc, 2016 ONCA 168, refused to enforce
a franchisee’s non-compete covenant because the evidence demonstrated that the
franchisor did not intend to open a franchised store within the restricted
territory.
The Court concluded
that non-compete covenants must protect “the legitimate interest of the
franchisor”, but cannot extend beyond that. In this case, the franchisee had
de-identified its franchise and opened a similar business in the same location;
however, because the franchisor did not intend to operate in the protected
territory after the franchise relationship ended, the franchisor was found not
to have the requisite legitimate interest to restrict competition by the
franchisee within that territory. However, where a franchisee is declared to be
in breach of these provisions, the franchisor can take out injunctions in order
to protect its position.  In the Nigerian
case of Andreas Koumoulis v. Leventis
Motors Limited, (1973) ALL NLR 789, the appellant was sued for breach of
his contract of service as spare parts Sales Manager. Clause 6 of the contract
provided that the appellant shall not for at least a year, after leaving the
employment of the respondent, operate a similar business as that of the
respondent within a 50 miles radius from any trading station owned by the
respondent. The Supreme Court affirmed the decision of the trial court and held
that the clause was enforceable against the appellant.
Finally, as with
any business relationship, there is a dispute resolution component to franchise
arrangements. Franchise litigation lawyers typically deal with claims such as
violations of franchise sales laws or franchise relationships laws,
misrepresentations during the franchise sales process, failure to pay amounts
due, failure to make required refunds, and failure to provide contracted support.
Franchisors typically try to control litigation somewhat with contractual
provisions that require the franchisee to submit certain claims to mediation or
arbitration or require the franchisee to litigate only in a specific forum. In
2013, an Australian franchise, Pie Face,
was on the wrong end of series of legal action from its franchisees for
misleading representation about potential sales and profitability. In order to
avoid litigation, it is essential that the franchisor and the franchisee
clearly lay out the duties and obligations of both parties, warranties (if any)
and expected timelines for the performance of the said duties.
LEGAL
FRAMEWORK FOR FRANCHISING IN NIGERIA
Till date, there is
no specific franchising legislation in Nigeria. However, it must be stated that
there are several regulatory provisions, existing in bits and pieces that affect
franchising in Nigeria. An example is the National
Office for Technology Acquisition and Promotion (NOTAP) Act Cap. N62 LFN 2004
which established NOTAP. It would however be erroneous to state that NOTAP Act
is the regulatory Act for franchising in Nigeria. This is because NOTAP deals
only with the transfer of technology from foreign entities. Arguably, if an FA
was to be executed between local entities there would be no need for NOTAP registration.
However, there are still some legal issues to be sorted such as trademark
registration, incorporation of entities etc. For example, a company considering
franchising may wish to form a new entity to offer franchises and must decide
what type of entity to form, how to organize it, and what organizational
documents are necessary. Due to the fact that franchisees buying into a system
will want the unrestricted right to use the name and mark used by the system, a
franchise lawyer will work with the franchisor to obtain registration of the
trademarks. Section 4(d) and (e) NOTAP
Act grants NOTAP the power to register franchise agreements involving foreign
franchisors. The section goes further to state that the agreement shall be
registrable if in the opinion of NOTAP, it involves the use of trademarks, the
right to use patented inventions, the supply of technical expertise in the form
of the preparation of plans, diagrams, operating manuals or any other form of
technical assistance of any description whatsoever, the provision of operating
staff or managerial assistance and the training of personnel etc.
By virtue of Section 7 of the NOTAP Act:
‘…no payment shall be made in Nigeria to
the credit of any person outside Nigeria by or on authority of the Federal
Ministry of Finance, the Central Bank of Nigeria or any licensed bank in
Nigeria in respect of any payments due under a contract or agreement mentioned
in section 4(d) of this Act, unless a certificate of registration issued under
this Act is presented by the party or parties concerned together with a copy of
the contract or agreement certified by the National Office in that behalf.’
Regulation
4 of the Income Tax (Transfer Pricing) Regulation 1, 2012, states
that where a connected taxable person has entered into a transaction or a
series of transactions to which the Regulation applies, the person shall ensure
that the taxable profits resulting from such controlled transactions are in a
manner consistent with the arm’s length principle otherwise the FIRS shall make
necessary adjustments. Arm’s length principle simply means that the conditions of a
controlled transaction should not differ from the conditions that would have
applied between independent persons in comparable transactions carried out
under comparable circumstances. The arm’s length principle is relatable to
franchising in that it seeks to guide the relationship between connected parties
(companies that share common control or participate directly or indirectly in the
management, control or profit of one another). For example, agreements between
Group and Holding companies, subsidiaries, companies with the same directors
etc. However, this provision would arise in the event of future collaborations/transactions
(JVs, Technical Services Agreement etc.) between the franchisor and the
franchisee as a means of preventing unfair advantage in the dealings of related
entities. There are other provisions of the NOTAP Act which deals with
franchising such as section 6 providing
for the basic requirements which must be included in the service agreement
(including FAs) for it to be approved by NOTAP.
The basic
problem with NOTAP regulating FAs between local and foreign entities is its
lack of transactional focus. Some of the provisions in the NOTAP Act are too
bureaucratic in nature without paying particular demands to the tenets and
dynamics of the franchise Industry. Unfortunately, the same lack of
transactional mindset is exhibited by many Nigerian regulatory agencies, whose
consequent poor performance weighs businesses down, and negatively impacts
competitiveness of Nigerian businesses.
INTERNATIONAL PERSPECTIVES
Other
jurisdictions have already begun to enact and amend their laws in order to maximise
the advantage of franchising. In the United States, some provisions of the California Franchise Relations Act (CFRA)
were revised through the California Bill AB-525 which was passed into law in 2015.
This sweeping new law gives franchisees across California more protections when
purchasing, transferring and terminating their FAs. Sponsored by the Coalition
of Franchisee Associations (CFA), the law affects new franchisees (i.e., those
who are granted or renew an agreement after January 1, 2016) and current
franchisees upon sale, transfer or termination of their FA. Specifically, the
law amends the CFRA to generally make FAs, more franchise friendly. The changes
made were more significant in the sale, transfer and termination of FAs. For
instance, the law changed the 30 day notice and cure period required before a
franchisor can terminate an FA to a 60 day notice and cure period.
The
franchise industry within the United States is showing no signs of slowing
down. Franchising and distribution continue to make up a large part of the
United States’ economy. According to The
Franchise Times of 2014, the top 200 franchise systems on its rankings had
total annual sales in 2013 of $590 billion.
In South
Africa (like Nigeria), there is also no singular law regulating franchising.
However, franchising is adequately provided for in South Africa’s Consumer Protection Act 2008, which defines
franchising and its various concepts. It also covers provisions on certain
consumer rights which afford protection to potential franchisees, chief among which
are:
(a)The
right to obtain a disclosure document when assessing a franchise opportunity fourteen
days before signing the franchise agreement. The disclosure document should
contain the number of franchise outlets, list of current franchisees,
franchisor’s turnover and net profits etc.; (b) the right to cancel the
agreement with no penalty within 10 business days of signing it (cooling off
period); and (c) Protection against unfair discrimination by suppliers; and (d)
protection against a franchisor receiving a direct or indirect benefit or compensation
from suppliers to its franchisees or its franchise system unless the fact
thereof is disclosed in writing with an explanation of how it will be applied.
CONCLUSION
In order
for Nigeria to fully leverage franchising as a tool for economic development,
it would be necessary to enact laws to guide franchise transactions. Franchising,
as a form of strategic alliance holds a lot of promise for economic development
by building up entrepreneurial capacity of local business people, indigenising
the economy, and contributing to halt capital flight; hence, it should receive
institutional support. FAs are more often than not, one-sided in favour of the
franchisor and as such, most franchisees would require protection through specific
laws. General contract law cannot fully embrace the challenges therein. An
example can be drawn from the Landlord-Tenant relationship. Before the passing
of the Tenancy Law of Lagos State 2011, it was the norm for Landlords to
collect multiple years rent in advance. Section 4 of the Law put a stop to this
oppressive act (although it is yet to be seen whether compliance has been as a
result of the positive impact of the law or due to the commercial
impracticability which has made such practice financially disadvantageous).
Nigeria should take a leaf in franchise regulation from United States and South
Africa. The Disclosure Document and ‘cooling off’ period that are required in
South Africa are additional points aiding the cause for franchise regulation in
Nigeria. This would be particularly important where the franchisor is a foreign
company; the franchisee needs to be adequately protected in a fair and balanced
FA. Proper franchise regulation would go a long way in unleashing the
entrepreneurial energy of Nigerians and also in creating an atmosphere which while
inviting investment is also conducive for growth.
 
Franklin
Okeke, Esq.  is a commercial lawyer focusing
on franchise arrangements and practices with Messrs LeLaw Barristers & Solicitors, Lagos