One Stop Overview Of Basic Intellectual Property Right Requirements – Trademark


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One Stop Overview Of Basic Intellectual Property Right
Requirements.1

  1. Introduction

The incidence of start-ups and tech companies in Nigeria has led
to the birth of various intellectual properties. Frequently, these
fledgling companies are unaware of their existing or potential
rights and opportunities. Some of the companies who are aware of
their rights lack the basic information required for protection. It
is thus expedient to re-establish and expatiate the requirements
for intellectual property rights protection in Nigeria.  

  1. Patent

A patent is an exclusive right granted over an invention,
whether a product or a process, that provides a new way of doing
something, or offers a new technical solution to a
problem.2 Essentially, patents give its owner the legal
right to exclude others from making, using, or selling
an invention for a limited period of time.3

In Nigeria, the patentee has the right to preclude any other
person from making, importing, selling or using the product, or
stocking it for the purpose of sale or use where a patent has been
granted in respect of a product.4 Patent right expires
at the end of the twentieth month from the date of
filing.5   

Generally, to be entitled to patent protection:

  1. the invention must show an element of novelty; that is, some
    new characteristic which is not known in the body of existing
    knowledge in its technical field;

  2. the invention must involve an “inventive step” or be
    “non-obvious”. This means that it could not be obviously
    deduced by or readily apparent to a person having ordinary skill in
    the relevant technical field.

  3. the invention must be capable of industrial application,
    meaning that it must be capable of being used for an industrial or
    business purpose beyond a mere theoretical phenomenon, or be
    useful;

  4. its subject matter must be accepted as “patentable”
    under law and the invention must be disclosed in an application in
    a manner sufficiently clear and complete to enable it to be
    replicated by a person with an ordinary level of skill in the
    relevant technical field.6

An invention is patentable in Nigeria if it is new, results from
inventive activity and is capable of industrial application. An
invention is also patentable if it constitutes an improvement upon
a patented invention and also is new, results from inventive
activity and is capable of industrial application.

In Nigeria, patents cannot be validly obtained in respect
of:7

  1. Plant or animal varieties, or essentially biological processes
    for the production of plants or animals (other than microbiological
    processes and their products);8

  2. Inventions the publication or exploitation of which would be
    contrary to public order or morality (it being understood for the
    purposes of this paragraph that the exploitation of an invention is
    not contrary to public order or morality merely because its
    exploitation is prohibited by law).

  3. Principles and discoveries of a scientific nature are not
    inventions for the purposes of this Act.

  1. Trademark

A trademark can be any word, phrase, symbol, design, or a
combination of these things that identifies your goods or services.
The use and adoption of trademarks provides an avenue for customer
recognition in the marketplace and provides a unique tool for
distinguishing a start-up’s products and services from those of
the competitors.9 In principle, a trademark registration
will confer an exclusive right to the use of the registered
trademark. This implies that the trademark can be exclusively used
by its owner or licensed to another party for use in return for
payment. Registration provides legal certainty and reinforces the
position of the right holder, for example, in case of
litigation.10

In Nigeria, trademark protection subsists for a period of seven
years upon registration but may be renewed from time to time for
14-year periods thereafter.11

For a trademark to be registrable in Nigeria, it must consist of
at least one of the following listed essential particulars:

  1. the name of a company, individual, or firm, represented in a
    special or particular manner;

  2. the signature of the applicant for registration or some
    predecessor in his business;

  3. an invented word or invented words;

  4. a word or words having no direct reference to the character or
    quality of the goods, and not being according to its ordinary
    signification a geographical name or a surname;

  5. any other distinctive mark.12

  1. Copyright

Copyright is a legal term used to describe the rights that
creators have over their literary and artistic works. Copyright
protects the owner’s economic right and moral
rights.13 The economic right allows the rights owner to
derive financial reward from the use of their works by others and
moral rights protects the non-economic interest of the author and
essentially protects the integrity and ownership of their
work. 

In Nigeria, only literary works, musical works, artistic works,
cinematograph films, sound recordings and broadcasts are works
eligible for copyright protection.14 These works must in
turn satisfy some pre-conditions to be eligible for copyright
protection. The preconditions include originality, fixation and
other qualifying or connecting factors. For the work to be original
the work must be the expression of original or inventive thought.
It must not be copied from another work but should originate from
the author.15

The Copyright Act describes fixation as “a work that
has been fixed in a definite medium of expression now known or
later developed, from which it can be perceived, reproduced or
otherwise communicated either directly or with the aid of any
machine or device”
.16

A third requirement for protection, which, unlike the previous
two requirements, applies to all categories of works, is qualifying
factor. This means that, for a work to qualify for copyright
protection under Nigerian law, there must be some connection
between the work and Nigeria.17 This could be by virtue
of the status of the author, the place of first publication of the
work18 or the reference to international
agreements.19 Works made by or under the direction or
control of the Government, a State authority or a prescribed
international body are also deemed to have the requisite
nexus.20

  1. Trade Secret

A trade secret is any practice or process of a company that is
generally not known outside of the company. Information
considered a trade secret gives the company a competitive
advantage over its competitors and is often a product of
internal research and development.21

In general, to qualify as a trade secret, the information must
be:

  1. commercially valuablebecause it is secret,

  2. be known only to a limited group of persons, and

  3. be subject to reasonable steps taken by the rightful
    holder of the information to keep it secret, including the use of
    confidentiality agreements for business partners and
    employees.22

Protection of trade secrets and other forms of confidential
information, although not falling within intellectual property
statutory protection in Nigeria, subsists at common law and is
therefore part of the body of Nigerian laws.23 

However, companies need to take preventive measures to protect
trade secrets against theft or misappropriation, and a few ways in
which they can do so include:

  1. Use of Non-disclosure agreements (NDAs): employees and business
    partners should sign a non-disclosure agreement that restrict them
    from disclosing a company’s confidential information and trade
    secrets.

  2. Use of Non-compete agreements (NCAs): employers should ask
    employees, contractors and consultants to sign non-compete
    agreements to limit them (within reason) from entering into
    competition with the employer when their employment/service
    agreement ends.24

  3. Use of Robust IT security infrastructure: employers should use
    robust security infrastructure such as firewalls, antivirus
    software, sandbox, etc., to protect the company’s trade
    secrets.

  4. Controlling the accessibility of important documents: employers
    should control the accessibility of important documents by placing
    proper encryption on such files.

  5. Conclusion

The concept of intellectual property is oftentimes misunderstood
and misconstrued. IP concepts need to be properly explained and the
principles firmly established in order to be fully appreciated by
new comers like startups and Medium and Small-Scale Business
Enterprises. Experience has shown that unless IPRs and certain
unique processes and technical know-how are identified and properly
protected utilizing one or more of the intellectual property rights
identified in this paper, any new business undertaking is likely to
run into serious problems sooner rather than later, resulting in
economic and legal chaos.

Footnotes

1 Oreoluwa Adebayo, Associate, Corporate Finance
and Capital Markets, S.P.A. Ajibade & Co, Lagos,
Nigeria.

2 See World Intellectual Property Organization,
“Patent”, available at https://www.wipo.int/patents/en/,
accessed on 23rd June 2022.

3 See Wikipedia “Patent” available at https://en.wikipedia.org/wiki/Patent,
accessed on 23rd June 2022.

4 Section1 (1), Patents and Designs Act, Cap. P2, Laws of
the Federation of Nigeria (LFN), 2004.

5 Section 7 (1), Patents and Designs Act, Cap. P2, Laws
of the Federation of Nigeria (LFN), 2004.

6 Supra at n. 2.

7 Section 1(4), Patents and Designs Act, Cap. P2, Laws of
the Federation of Nigeria (LFN), 2004.

8 Note however, that a Breeders Right may be obtained in
respect of new varieties of plants. See Section 13, Plant Variety
Protection Act, 2021.

9 See United States Patent and Trademark Office,
“What is a trademark?”, available at https://www.uspto.gov/trademarks/basics/what-trademark,
accessed on 28/06/22. accessed on 23rd June
2022.

10 See WIPO, “Trademarks?”, available at https://www.wipo.int/trademarks/en/,
accessed on 23rd June 2022.

11 Section 23(1), Trade Marks Act, Cap T13, Laws of the
Federation of Nigeria (LFN), 2004.

12 Section 9(1), Trade Marks Act, Cap T13, Laws of the
Federation of Nigeria (LFN), 2004.

13 See World Intellectual Property Organisation,
“Copyright” available at https://www.wipo.int/copyright/en/,
accessed on 30th June 2022.

14 Section 1(1), Copyright Act, Cap. C28, Laws of the
Federation of Nigeria (LFN), 2004.

15 Peterson. J., University of London Press v. University
Tutorial Press [1916] 2 Ch 601.

16 Section 1 (2) b, Copyright Act, Cap. C28, Laws of the
Federation of Nigeria (LFN), 2004.

17 Section 3(1), Copyright Act, Cap. C28, Laws of the
Federation of Nigeria (LFN), 2004.

18 Note that broadcasts are excluded in this
category. 

19 Section 4(1), Copyright Act, Cap. C28, Laws of the
Federation of Nigeria (LFN), 2004.

20 A. O. Oyewunmi, Nigerian Law of Intellectual
Property
, University of Lagos Press at p. 43-49.

21 See Investopedia, “Trade Secret”, available
at https://www.investopedia.com/terms/t/trade-secret.asp,
accessed on 28th June 2022.

22 See World Intellectual Property Organization,
“Trade Secrets”, available at https://www.wipo.int/tradesecrets/en/,
accessed on accessed on 28th June 2022.

23 Supra n.20.

24 Supra n.22.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.