Africa Intellectual Property

We are renowned for our expertise in IP Litigation, trade marks, copyright, and other IP-related advisory, trade mark opposition, Customs border controls, and anti-counterfeiting campaigns.

Beyond our deep knowledge of the critical regulatory frameworks in Africa, we understand the dynamics of the sectors and markets in which our clients operate, and we have the key stakeholder relationships across Nigeria and Africa to carry out swift action no matter the location.

Our consistent rankings as IP Firm of The Year by leading international ranking organizations such as World Trade Mark Review and Chambers and Partners Global Review (2021-2024) are testament of our efficient and effective brand protection services.

Range of services

Our range of brand protection services include the following:

• Advisory Opinions on Brand Protection Strategies

• Investigations (Market Searches)

• Regulatory Enforcement Actions/ Dawn Raids

• Customs Recordals/Border Measures

• E-commerce Monitoring/Market Watches

• Regulatory Action at the Corporate Registry

• Intellectual Property Litigation

• Trade Mark Watch Services & Opposition

• Domain Name Dispute Proceedings

Our Services

Advisory opinion on Brand Protection Strategy

Our anti-counterfeiting team possesses a deep understanding of the Nigerian and African intellectual property legal frameworks and markets. We are dedicated to staying at the forefront of legal developments and best practices, and we will apply this knowledge to

advise you on effective strategies to combat existing and emerging piracy and counterfeiting activities.

We routinely advise leading international brand owners on IP protection in Nigeria and, for cross border matters across Africa, we collaborate with our partners in various cities to provide comprehensive, commercially relevant legal advice. This approach enables us to navigate complex legal and commercial landscapes effectively on behalf of client groups.

Experience & Expertise

1. We advised a major global paint manufacturing giant on the strategies for obtaining relevant documentations for the recordals of its large portfolio of trade marks in preparation for a trade mark infringement/passing off suit against an adverse party in Nigeria.

2. We provided advisory services to a global pharmaceutical company after conducting confirmatory investigations in the Kano, Kaduna, and Onitsha markets in Nigeria, aimed at identifying the sources of counterfeit products and parallel imports of the company's pharmaceuticals being sold in those regions.

3. In January/April 2024, we advised a top tier manufacturer of health/hygiene products after we had identified the vendors dealing in the offending parallel imports and counterfeit products in Lagos, Abuja, Onitsha, and Aba markets.

4. In February 2024, we advised an Indian manufacturer of tobacco products on the chances of successfully instituting a trade mark cancellation action against adverse entity also in the tobacco industry on the grounds of non-use.

5. In June 2023, we advised an American manufacturer of a well-known brand of Whiskey products on the importer of a confusingly similar brand of whiskey being shipped into Nigeria from Eastern Europe.

Investigations

Our Brand Protection Team regularly conducts covert investigations such as onsite checks, physical market checks and surveys, corporate searches, trade mark searches, web searches and trade mark watch services. These investigations often precede enforcement actions and raids, allowing us to determine the most effective strategy for safeguarding our clients' brands and reputations. Importantly, each approach is tailored to the specifics of the case. As part of our investigative process, we carry out discreet visits to the locations of the infringers and counterfeiters, including offices, open markets, retail shops, packing stores, and warehouses to gather evidence and other information about the manner and extent of the use/violation of

clients’ intellectual property. The intelligence gathered from such investigations help to shape our advice on how best to attack and eliminate the counterfeiting activity.

Recent Experience & Expertise

• In 2024, we investigated vendors in Lagos, Abuja, Kano, Kaduna, Onitsha, and Aba on behalf of a global pharmaceutical company, which led to the seizure of counterfeit products worth 100 million naira through a regulatory agency.

• Between 2022– 2024, we were retained by a top-tier German pharmaceutical manufacturer to conduct regular market monitoring, resulting in enforcement actions and seizures that curtailed the sale of infringing and parallel import products.

• We carried out onsite investigations in Ghana for a multinational beverage company to identify importers of confusingly similar brands, providing critical insights to support the company's planned product launch in multiple new markets.

• We conducted an in-use investigation in Ilorin, Nigeria, for an Indian tobacco manufacturer to assess the use of a disputed trademark by an adverse party in connection with tobacco products, providing key evidence for the company's brand protection efforts.

Regulatory Enforcement Actions/Dawn Raids

In collaboration with sector regulators and law enforcement agencies, we facilitate swift raids and seizures of offending products from the markets, with criminal prosecution of the offenders thereafter. We have cordial understanding and professional relationships with sector regulators and law enforcement agencies including:

1. National Agency for Food & Drug Administration &Control (NAFDAC)

2. Standard Organization of Nigeria (SON)

3. Nigeria Copyright Commission (NCC)

4. Nigerian Customs Service (NCS)

5. Federal Competition and Consumer Protection Commission (FCCPC)

6. Nigeria Police Force

7. Economic & Financial Crime Commission

We have carried out regulatory enforcement actions against counterfeiters in their offices, warehouses, packing shops, open markets and other places where counterfeits and parallel imports were being stored. Following the raid actions, offending parties are further investigated leading to the discovery and apprehension of the suppliers of the offending products and the

elimination of their trade channels. Further, we hold watching briefs for our clients and provide other technical support to law enforcement in the prosecution of criminal charges against counterfeiters.

Experience & Expertise

• We facilitated NAFDAC regulatory actions simultaneously executed against counterfeit/parallel imports and vendors in markets in markets in Abuja, Lagos, and Aba in respect of a pharmaceutical product used for regulation of menstrual flow. Some of the vendors were made to disclose their suppliers and appropriate administrative charges and undertakings have been imposed and extracted from them.

• Recently, in July 2024, we led the NAFDAC in a regulatory action in Aba, Abia State which resulted in the seizure of over 26,000 counterfeits units of our client’s global TWINING tea brand. The seized units were valued at approximately 72 million naira.

• We also carried out simultaneous NAFDAC regulatory actions in markets in Lagos and Kano on behalf of a manufacturer of a global brand of pharmaceutical products in respect of its antacid products. The managing director of the offending manufacturer is being prosecuted, and we are holding a watching brief in the criminal action. We facilitated NAFDAC regulatory enforcement actions against traders dealing in infringing medicines (without marketing authorization) in some states of South-Eastern and Northern Nigeria.

Customs Recordal and Border Measures

Our Team comprises high skilled lawyers and hands-on paralegals with extensive experience in the best strategies to forestall the import and export of our counterfeit and parallel import products of our clients through the borders in Nigeria and across Africa.

Leveraging on our professional relationship and partnership with the Nigerian Customs Service and the Nigerian Copyrights Commission, we are able to assist our clients using formal and informal systems, in safeguarding their brands within and outside the country, as well as from unscrupulous distributors that specialize in parallel importation of goods into various African countries.

Experience & Expertise

• In 2022, based on an informal notification arrangement with Customs, a consignment/container load of counterfeit computer products were seized by the Nigerian Customs Service.

• In 2024, we also successfully prompted the Nigeria Customs to issue a nationwide alert to all of its units and commands, to prevent the import or export of infringing pharmaceutical goods related to our client.

Regulatory Action at the Nigerian Corporate Registry

We have and maintain a professional relationship with the Nigerian Corporate Affairs Commission which allows us to advance the protection of our client’s brands through conducting extensive corporate searches, coordinating and prosecuting administrative actions at the Nigerian Corporate Registry against conflicting businesses or company/trade names used for counterfeiting activities.

We have especially carried out these administrative actions on behalf of prominent companies within Nigeria’s Fast Moving Consumer Goods (FMCG) sector, health and pharmaceuticals, and technology companies.

Intellectual Property Litigation

We regularly institute and prosecute court actions to protect intellectual property assets. We are experienced and renowned for managing entirely or substantially the litigation portfolios of many organizations across Nigeria and around the world. We also liaise with law enforcement/regulatory agencies on behalf of our clients.

We have successfully prosecuted matters from trial courts up to the Supreme Court of Nigeria, including matters originating from unfavourable decisions at the Trade Marks Registry in trade mark opposition or cancellation proceedings.

Experience & Expertise

• In 2007, we obtained and court orders through the Nigerian Customs Services, on behalf of an electronics manufacturer/dealer towards the seizure electronic goods with a combined value of over N50,000,000,000.00, which were found to be subject matter of trade mark infringement by the Federal High Court.

• In 2021, we successfully represented an American alcoholic beverage entity to obtain final injunctions to restrain the sale and distribution of infringing products in the case of E & J Gallo v Benkingdom Nigeria Ltd & 2 Ors.

• In 2022, we obtained a 4 Billion naira monetary judgment and perpetual injunction against a class of defendants involved in the sale and distribution of infringing hygiene/sanitary pad products on behalf of a Turkish entity in the case of Hayat Kimya Nigeria Ltd v Libretto Ltd.

• We successfully obtained a 50 Million Naira naira monetary judgment and perpetual injunction against a class of defendants/traders involved in the sale and distribution of counterfeit/infringing electrical products on behalf of an Indian manufacturer, QRG Enterprises Ltd.

• We successfully obtained interim and interlocutory injunctions against a local distributor of alcoholic beverages, preventing them from dealing in infringing sparkling wine products while the court action for trademark infringement and passing off proceeded.

• We successfully secured orders of injunction from the Nigerian Court of Appeal to restrain a local manufacturer from using and obtaining trade mark registration for an infringing mark.

Trade Mark Watch Services & Opposition

We are vigilant and keep an eye on the Nigerian Trade Marks Registry through periodic physical searches of the Registry’s journal publications.

Our internal trade mark search system “JEE Traka” also gives us the added advantage as a quick repository of information on relevant trade mark applications in the Registry. We also monitor the markets and other trade channels for activities that may be inimical to our clients’ legal rights, with prompt advice on how to avert the same.

With respect to trade mark oppositions, we regularly represent clients in proceedings opposition proceedings filed by or against our clients trade mark applications.

Experience & Expertise

• We are currently acting as legal counsel for an Opponent, a popular British pharmaceutical company.

• We recently secured a landmark victory in an opposition case where the trademark tribunal upheld our arguments, affirming that the word mark of the opposing party was confusingly similar to our client’s device mark.

Domain Name Disputes

We represent our clients in disputes relating to unauthorized use of our clients’ marks as part of a domain name.

We understand the terrain of WIPO’s (World Intellectual Property Organization) Uniform Domain Name Dispute Resolution Policy (UDRP) for complaints against offending generic Top-Level Domain (gTLDs) such as .com, .net, and .org domains. We also appreciate the Nigeria Internet Registration Association (NiRA) system of domain name dispute resolution regarding complaints against abusive .ng domain names.

Experience & Expertise

• In 2021, we successfully represented a top Nigerian/African telecommunications company in a UDRP domain name dispute and had the offending domain name transferred to our client.

• In other cases of abusive domain name use since 2021, we have successfully stopped adverse parties from using our clients’ trade marks as part of their domain names through cease-and-desist letters to the offending entities.

• In some of these cases, the offending entities abandoned their domain names without renewal upon being served with our cease and-desist letters. In some other cases as well, our take-down notices to web-hosting companies have led to the deletion of offending domain names.

E-commerce Monitoring & Market Watches

In today’s rapidly evolving digital marketplace, the challenges brands face extend far beyond traditional trademark physical markets. infringement, Counterfeiting, and unauthorized distribution are no longer limited to walk-in stores as they now extend to e-commerce platforms and online marketplaces on a global scale.

Our Brand Protection and Anti-counterfeiting Team recognizes this risk and the critical need for a more robust, proactive approach to safeguarding our clients' brands in this dynamic environment. Our team understands the importance of staying ahead of these risks and has developed comprehensive strategies that go beyond conventional methods of brand protection.

Through comprehensive e-commerce monitoring and market watch services, we are able to prevent a dilution of our client’s brands, safeguarding their intellectual property and ensuring that our client’s supply chains across various trade channels are well monitored and protected.