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Damilare Kujembola: Doing Business in Nigeria – The Intellectual Property Angle

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Intellectual property refers to a bundle of rights accruing to an individual or a corporate entity as a result of a creation. Individuals and Savvy businesses have come to realize that intellectual property is a force to reckon with, with respect to doing business and maximizing its outcome. It is therefore imperative that for every FDI (Foreign Direct Investment) or indigenous investment, the following should be at the back of your mind:

Copyright
It refers to a bundle of rights employed in safeguarding the use of musical, artistic, literary, cinematography, sound recording and broadcast works. The law governing copyright law and practice is the Copyright Act of 1988 which was amended in 1992 and 1999. This Act set up the Nigerian Copyright Commission which is responsible for administration of Copyright in Nigeria. It is important to note that the law or the Nigerian Copyright Commission does not run a centralized system of registration of copyright. In other words, REGISTRATION IS NOT MANDATORY. It will suffice that the author of the work has expended sufficient effort on making the work to give it original character and that the work has been fixed in a definite medium of expression from which it can be perceived or reproduced or otherwise communicated either directly or with the aid of a machine or device.

For foreigners looking to copyright their works in Nigeria, at least one of the authors must be a citizen of or domicile in or a body corporate established by or under the laws of a country that is a party to an obligation in a treaty or other international agreement to which Nigeria is a party or the work must first be published in a country which is a party to an obligation in a treaty or other international agreement to which Nigeria is a party or by the United Nations or any of its specialized agencies or by the Organization of African Unity or by the Economic Community of West African States.

For owners of musical works and sound recordings or individuals interested in getting licenses for the use of musical works or sound recordings, the Nigerian Copyright Commission has approved the establishment of a collecting society for the purpose of collecting royalties and bringing action on behalf of the owners of musical works and sound recordings. It is called the Copyright Society of Nigeria. Exploiters of works in these categories such as value added service providers; agencies looking to advertise with musical content have an option of getting license to use multiple works without the stress of meeting the owners in person.

Finally, copyright protection in Nigeria in respect of literary, musical, or artistic other than photographs, lasts for a period of seventy years after the end of the year in which the author dies. However, in the case of government or body corporate, it will expire seventy years after the end of the year in which it was first published. In the case of cinematograph films and photographs the copyright will expire fifty years after the end of the year in which the recording was first made or in the case of broadcast, when the broadcast first took place.

Trademark
Trademark is a symbol or a sign which differentiates the goods and services of one business from another. It is employed by individuals or corporate bodies in business of trading goods. For individuals involved in the provision of service, a service mark is the term most appropriate. Unlike Copyright, there is a centralized system of registration of trademark in Nigeria at the Trademarks, patents and Design registry.

To protect your name, logo, domain name, shape, color, slogan, all that is needed is registration with the Registrar of Trademarks. The Nigerian Trademarks Act vest registration of trademark not solely on the proprietor of the mark. A registered user and an assignee amongst others can also apply to register their titles to the mark. Also for investors looking to engage in foreign direct investments, who haven’t yet registered their companies, the Act allows for individuals to register on behalf of the unformed corporate body.

In registering your mark, you have to choose a minimum of 3 names first before the application can be accessed at the registry. This mark must be distinctive i.e. it must be able to distinguish goods with which the proprietor of the trademark is or may be connected in the course of trade from goods in the course of which no connection exists. Descriptiveness; deceptiveness; public policy; immorality; similar registered mark, are common grounds on which trademark applications are refused. Also the mark must be conceptualized before it can be accepted for registration, in other words, it must be drawn or fixed on paper. Further to the above stated, there must be a letter or form of authorization to file the trademark on behalf of the proprietor. This is a letter authorizing your lawyer to register your mark on your behalf. It is major requirement aimed at prevent anyone from fraudulently registering a mark.

It is important to note that the duration of protection after registration is seven (7) years. However, it can be renewed thereafter from time to time for a period of 14 years. It is also note worthy that irrespective of the registration in Europe or America it is advisable to also register in Nigeria. Although Nigeria is a member of the Nice Convention, it is still backwards in terms of obtaining records of trademarks registered internationally except the extremely famous marks.

Patent
This refers to the protection granted by the law for an invention. However not all inventions are patentable. An invention will be patentable; if it is new i.e. it results from inventive activity and is capable of industrial application or if it is an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.

In registering your patent, the first step is to draft a specification and a claim. A specification is the description of the prior art and how to work the invention. The claims are what you assert is new and peculiar to you as the inventor that you do not want copied. It is advisable to get a lawyer to help guide with the draft and also to help fill the necessary forms.

It is important to note that while filing the specification and claim at the trademarks, patents and designs registry, you cannot publicly disclose details of the invention. The exception is where an inventor exhibits his invention in an official exhibition within six (6) months. The effect of the registration of patent at the Trademarks patent and designs registry is the protection of the invention for a period of twenty (20) years.

Industrial designs
These are primarily those elements incorporated into mass – produced products that aim to enhance their attractiveness by their appearance. The objectives of the Patents and Designs Act, governing industrial designs is to protect a design that is new or essentially better in some ways than what was created before.

There is also a centralized system of registration for an industrial design. There is a Registrar of Patents and Industrial Designs and there is a register in which industrial designs are recorded. The right to the registration of an industrial design is not vested in the true creator of the design. Such a right is vested in the statutory creator, that is, the person who, whether or not he is the true creator, is the first to file an application for the registration of the design. Industrial design can last for a period of fifteen years.

The registration of an industrial design confers upon the proprietor the right to preclude any other person from reproducing the design in the manufacture of a product; importing; selling or utilizing for commercial purposes a product reproducing the design and; holding such a product for the purpose of selling it or of utilizing it for commercial purpose.

However, where the product has been lawfully sold in Nigeria before the application for registration or where the design has been made available to the public, the exclusive right conferred on the registered owner will be taken away.

Photo Credit: Dreamstime |Sam74100

Trained in both US and Nigerian Laws, Damilare Kujembola is an Attorney qualified to practice law in Nigeria, specializing in Entertainment and Intellectual property transactions. Through his practice, Mr. Kujembola has developed an expertise in the area of licensing, distribution and financing of entertainment content as well negotiating talent deals. Through his words, he hopes to inspire a change in the Nigerian Entertainment Industry. Email: [email protected]

9 Comments

  1. oyin

    July 8, 2014 at 11:23 am

    Good job Dare!

  2. dire

    July 8, 2014 at 11:44 am

    Interesting piece.

  3. @edDREAMZ

    July 8, 2014 at 11:47 am

    a.k.a EDWIN CHINEDU AZUBUKO said…
    .
    Oky seen but mehn the note long wella plus grammer too much i swear….
    .
    .
    ***CURRENTLY IN JUPITER***

  4. dire

    July 8, 2014 at 11:53 am

    @eddreamzs i don’t think the article was meant for illiterates. You Nigerians dnt like reading.

  5. Aibee

    July 8, 2014 at 1:35 pm

    Well done, learned friend. I like how you simplified each of the Intellectual Property rights. To imagine that this was a four unit course in School. All the best with the California Bar Exam.

  6. MMONigeria

    July 8, 2014 at 4:31 pm

    Well written Damilare!

    More people doing business in Nigeria really need to know more about intellectual property.

    I remember some years ago when I was working (NYSC) in one of the ministry of science and technology, it was hard to see people coming patenting and stuffs like that

  7. laila

    July 8, 2014 at 8:48 pm

    Relevant article! Well written too

  8. Amosu abisoye

    July 9, 2014 at 9:55 pm

    Wow av always known the sky is ur limit .kudos my learned collegue and brother

  9. gbenga Odugbemi

    February 27, 2016 at 9:10 pm

    I can’t believe I’m just seeing this article. I like the “energy” behind it, it sure demonstrate knowledge of the subject. However, I’d like to point out some issues, not critiques of course, just some salient issues embedded in your discussions.

    One, it seems to me that the idea that copyright protection is automatic in Nigeria is a travesty. While the Act do not (in the spirit of the Berne Convention) for protection purpose require such registration as required of other intellectual products, the Nigerian Copyright Commission through its governing council has continued to advance the ‘evil’ the laws (locally and internationally) have tried to suppress. This is true because the NCC still maintains a registration system for copyrights in Nigeria and carefully clothing it with “evidence of protection”. See: http://www.eregistration.copyright.gov.ng/ncc/about
    This, in fact is the ‘evil’ the Act and especially the Berne Convention tried to remove/suppress when it requires contracting States to desist (not just from registration) but from any post-formality whatsoever as regards IP rights in copyrights. Like the US (before it was forced to change its policy), NCC has continued to use this secondary registration process as a source of income of authors. It does therefore not seem to me that copyright arise automatically in Nigeria, or perhaps, it can’t be said “copyright is automatic” since there can’t be two levels of protections. The implication of the NCC practise is that persons with its “evidence of protection” – which they get after registration – has a “better protection” instead of leaving authors at the same level of protection by not issuing certificates to anyone. In the advent of a conflict, courts are more likely to be easily swayed by giving deference to a person with a copyright certificate (especially one issued by NCC itself), and it is sad that the NCC – a body trusted with the duty of administering this field – has chosen itself to be the author of the futuristic problems this practise might cause. I hope this comment fall on the ‘right ears’.

    Secondly, when you talked about the duration of trademark protection, the 7 years and renewal for 14 years, I think it is safer to ‘slam’ the point that trademark’s protection duration in Nigeria is “everlasting” as well – as its counterparts in other jurisdictions – in so far as it is renewed before the initial protection period. This, in fact is the spirit of a careful reading of section 23(2), TMA.

    Thirdly, I think there’s a third requirement for copyright protection – which understandably you missed, especially as the legislatures in Nigeria has failed to review the Copyright Act for 17 years now. I should let you think about the last requirement. It’s rooted in every jurisdiction that administer copyright protection on works.

    Over all, the article is enlightening.

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