Jun 6, 2020

Possible Impact of the COVID-19 Pandemic on IP Protection in Nigeria – Bisola Scott



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.

 

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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)

www.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 


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