Intellectual Property

Trademarks

Our Trademark team provides the following services:

• Preliminary advice on registrability and other general advisory work
• Clearance searches
• Registration
• 3rd Party and other Office Actions
• Amendment of trademarks
• Takeover and Resuscitation of Old Files
• Recordal of Changes (Mergers, Assignments, Name and Addresses)
• Renewals and Restorations
• Portfolio Consultancy & Management
• Acquisition, Protection, Enforcement, Transfer & Revalidation of IP Rights
• Domain name issues relating to trademarks

General Information for Trademark Registration Documents Required

Documents Required

• The Name, Nationality and Address of the Applicant
• The name of the trademark or Device mark
• The Class in which it is to be registered (Note that Nigeria follows the International Classification of Goods and Services.
• The Specification of goods in the Class. Note that the general term “all goods included in the class” is no longer acceptable, and the specific goods for which the registration is sought should be indicated. Class Heading of Goods may be adopted.
• A duly signed Power of Attorney/Authorization of Agent

PROCEDURE FOR TRADEMARK

(1) Official Acknowledgement of Application

After verifying that the correct official fees have been paid and an official file opened for the new application, an Acknowledgement Form is issued in respect of the application on the same day. This Form allots a temporary number (TP.) to the application.

This Acknowledgment form merely acknowledges that an application has been received at the Registry on a particular date, which date remains the official date of that trademark for life. The Form also details the mark, the class, the name of the applicant as well as the agent(s) on record, if any.

(2) Examination of Application

The application is then sent for examination on both relative and absolute grounds of objections, and if cleared on both grounds, an Acceptance Form is issued. However, if the application does not meet the requirements, then a Refusal Notice is issued.

(3)Advertisement in The Trademark Journal/Publication

Once a mark has been accepted, it is listed for advertisement in the Trademarks Journal

(4) Oppositions /3rd Party Actions

After advertisement, an application for registration stands open for two months (counting from the date of the advertisement) for opposition purposes or 3rd Party Actions. The party objecting to the registration of a mark must file a Notice of Opposition within the two-month period, which is non-extendable.

(5) Sealing Fees/Final Registration Fees

The final Registration/Sealing Fees fall due for payment at the ‘uneventful’ expiration of the
opposition period. These fees must be paid in order for the Registration Certificates to issue.

OTHER INFORMATION

Duration of Protection

A trademark is registered for 7 years in the first instance, and may be renewed thereafter at the option of the registered proprietor, for further periods of 14 years thereafter. There is no limit to the number of renewals a mark may be subjected to.

Multi Class Applications

Multiple class applications are not available in Nigeria. Therefore, a separate applica
tion must be made for each class in which protection is sought.

Power of Attorney

A duly signed Power of Attorney/Authorization of Agent in our favor is required for processing the application. Only a simple signature is required for this document.

Translation

The Trademarks Registry requires the English translation of a proposed mark containing foreign characters. English is the official language in Nigeria, and we prefer that all documentation required for the registration process is translated at your end.

PATENTS

We have a deep appreciation of Patent rights, as valuable business assets for both organizations and individuals who seek to establish effective and lawful barriers to competition. We therefore encourage our clients to seek patent protection for their innovations before same are adopted or exploited by the competition. Obtaining this protection provides them with a legal recourse to recover damages in the event of patent infringement.

Our services include:

• Preliminary advice
• Prosecution and maintenance of Patents
• Patent searches
• Filing of Patents
• Patent Renewal
• Commercial Patent Services
• Contentious Patent Services (Administrative/Litigation/Alternative Dispute Resoultion)

Information on Patent Protection in Nigeria

An invention is deemed patentable if:
– it is new
– results from inventive activity and,
– is capable of industrial application

Documentary Requirements for Registration:

• A simple Power of Attorney/Authorization of agent.
• A “clean and clear” copy of the specification, claims, abstract and drawings. (Including amendments if necessary).
• A copy of the published PCT Pamphlet comprising the complete specification i.e. Copy of International Publication, International Preliminary Report on Patentability and the international Search Report/Written Opinion,
• The text of the PCT specification and claims filed should include any amendments effected by the annexes to the International Preliminary Examination Report.

Registration Process

• Official Acknowledgement of Application:

An application is made in the prescribed form and accompanied by the requisite documents to the Registrar who issues a filing Receipt to the applicant acknowledging that the application has been filed and received at the Registry. The date of receipt of the application at the Registry is the official filing date of the patent.

• Examination of Application (Acceptance Notice):

The Patent application is examined to ensure its conformity with the documentary requirements stipulated by the Patents & Designs Act. Where an Application satisfies the documentary requirements, an Acceptance Notice would issue in favour of the Applicant.Where the application however fails to conform to the prescribed requirements, the Registrar will not issue the Acceptance form until these requirements have been met.

• Issuance of Letters Patent (Certificate):

The Letters Patent is issued following the issuance of the Acceptance Form.

• Duration of Protection

Registration of Patent is valid for a period of 20 years and must be renewed annually within the indicated 20 years after which it reverts to the public domain.

DESIGNS

A registered design protects the aesthetic appearance of an article. The Nigerian Patents & Designs Act allows for the registration of 2 different types of designs:

• Combinations of lines or colours or both (e.g. Textile Designs)
• Three-dimensional designs ( e.g. product packaging )

Conditions for Registrability

An industrial design is registrable if-
– it is new; and
– it is not contrary to public order or morality

Documentary Requirements for Registration:

• An application in the requisite form stating the article to which the design is to be applied.
• Statement of Novelty of the Design
• Specimens, photographic or graphical representations of the design.
• A Power of Attorney, if application is being made by an agent.
• An indication of the kind of product or class of product for which the design will be used.
• Foreign priority applications: a written declaration showing the date, number, country and the name of the person who made the earlier application. If unavailable at the time of application, the applicant shall within 3 months of application, furnish the registry with a certified copy of the earlier (foreign) application.

Documentary requirements for filing an amendment

• An application in the requisite form
• 6 specimens, photographic or graphical representations of the amended design.

Drawing requirements

• The representation of the design shall be made on strong paper and except where otherwise required, on one side only of a size approximately thirty- three (33) centimetres by twenty (20) centimetres and having amargin of approximately five (5) centimetres.
• The figure or figures contained in the representation shall be placed in an upright position on the sheet.
• Where the representations are drawings or tracings, they shall be in ink, and if on tracing cloth or paper, it shall be mounted on paper of the size prescribed above.
• Where words, letters or numerals appear in the design, but are not of essence to the design, they shall be removed from the representations.

Registration Process

• Acknowledgement Notice:

An application is made in the prescribed form and accompanied with the requisite documents to the Registrar, who issues a form to the applicant, acknowledging receipt of the application made.

• Examination (issuance of Acceptance Notice):

The Registrar will examine every application to ensure compliance with the documentary requirements prescribed by the Act as well as to ensure that the design is not contrary to public order or morality. In the event that the application fails to meet these requirements, the Registrar will issue arefusal notice in writing. An Acceptance Notice would be issued where the design application satisfies the prescribed requirements.

• Registration:

Upon the acceptance of the application, the design would be registered and a Registration Certificate would issue.

• Post-registration:

Upon Registration, a duplicate of the Design Certificate will be included in the Register of Industrial Designs. The Registrar is requested to publish a notification of the registration.

Maintenance/Renewal fees

The registration of a design lasts for a period of 15 years after which it reverts to the public domain and is no longer renewable. Within the indicated 15 years, the proprietor is required to renew the Design every 5 years.

IP Audit

We assist clients to discover their unused and/or under-utilized IP assets, the end purpose being to enable clients make prudent business decisions as relates to their IP portfolio. Our approach to IP Audit is beyond inventory-taking and therefore, at the end of each Audit exercise, we provide top notch advice for maximizing the commercial value of clients’ IP Portfolio. We also develop IP strategies for clients.

Our IP Audit services include:

• Identification of the value, ownership and legal status of the intellectual assets owned by a company
• IP Due diligence
• IP Management
• Software Audit
• Compliance Evaluation
• Review of asset creation procedures, asset quality evaluations, asset exploitation processes, IP related agreements and all relevant company policies
• Buying or selling of IP rights
• Evaluation of the brand and advertising strategies with respect to existing and/or potential IP rights.
• Helping to devise new IP protection strategies

A domain name is a business address/identification string that defines a realm of administrative autonomy /control in the global market place known as the internet.

Our Domain Name team is able to offer a wide range of services to our varied clientele including:

• Domain name availability searches and general advisory services
• Registration of domain names
• Management and maintenance of domain names
• Filing of domain name complaints.
• Domain name Dispute Resolution

The team assists clients in filing domain name complaints in respect of a generic top–level domain names using the Uniform Domain Name Dispute Resolution Policy(UDRP) Administrative Procedure or at the Nigeria Internet Regulation Association (NIRA) using the NIRA Dispute Resolution Policy.

Basic information on UDRP:

In accordance to the UDRP Policy, in order for one to succeed in lodging this kind of complaint, the dispute must involve an alleged abusive registration of a name, which in turn, must meet three criteria;

• The ‘offending’ domain name must be identical or confusingly similar to a trademark or service mark in which the complainant has right; and
• The ‘offending’ registrant has no rights or legitimate interests in respect of the said domain name; and
• The ‘offending’ domain name must have been registered and is been used in bad faith.

The Administrative panel provides many examples of circumstances that are considered to be evidence of a bad faith registration and use of a domain name.

UDRP Administrative Procedure

Stage 1: Filing of the Complaint with an Internet Corporation for Assigned Names and Numbers (ICANN)- accredited dispute resolution service provider chosen by the complainant; e.g. WIPO.

Stage 2: A response is filed by the Respondent against whom the complaint was made

Stage 3: An Administrative Panel of 1 or 3 persons, who will deal with the Complaint, is set up by the service provider. The choice of the size of the panel is that of the parties.

Stage 4: The issuance of the panel’s decision, as well as notification of all relevant parties of the same.

Stage 5: The implementation of the Panel’s decision by the Registrar(s) concerned should there be a decision that the domain name(s) in question be cancelled or transferred.

Information/Documentation Required to file a Complaint

• Details of the Complainant (Name, Corporate or legal status, address, telephone, fax and email).
• Complainant’s preferred method of communication during the administrative procedure (e.g. Address and contact).
• Details of the Respondent (Full name, Corporate or legal status, address, telephone, fax and email).
• Information on the ‘offending’ domain’s registration.
• Preferred language for the dispute to be heard.
• Details of the Complainant’s trademark.
• Annexure showing use of the ‘offending’ domain.
• Remedies requested (cancellation or transfer of the offending domain).

Time Frame

The time frame from filing of the complaint to obtaining a decision is within 60 days, all things being equal and without delays.