Global Law Experts Logo

Find a Global Law Expert

Specialism
Country
Practice Area
awardsr

Awards

Since 2010, the Global Law Experts annual awards have been celebrating excellence, innovation and performance across the legal communities from around the world.

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

posted 5 years ago

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 registration.[1] 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[2] (TMA) and Patents & Designs Act[3] (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 the right holders do not require registration or periodic renewals to maintain rights over them.[1] However, the Nigerian Copyright Commission (Commission) established a voluntary copyright notification scheme for owners of copyrights to notify the Commission of their creations in order to maintain an effective databank of local copyrighted works.[2] Although the Registry and Commission are closed, they both have online platforms for registration which IP owners may utilize this season. 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.

  • 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.[3] 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 Marks Regulation (Regulation),[4] 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.[5] 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.[1] The Registrar must also be satisfied that the circumstances justify an extension of the time for compliance.[2] 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.[3]

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.[4] The Registrar may allow such extensions subject to any conditions he may impose.[5] 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.[6]  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.[7] 

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. [8] 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.[9] The Italian Patent and Trademark Office has also provided a stay of all official deadlines falling within 9th March and 3rd April

2020.[1] Similarly, the UK Intellectual Property Office (UKIPO) stated that it will extend deadlines where national and international legislation allows.[2] 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.[3]

(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.[4]

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).[5] 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.

  • 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.[6] 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.

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.[1] If the applicant does not file a counterstatement, it will be taken that the applicant has abandoned its application.[2] 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.[3] If an opponent leaves no evidence, then unless the Registrar directs otherwise the opponent shall be deemed to have abandoned the opposition.[4] 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.[5] 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[1] the Supreme Court held 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.

  • 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.[2] Similarly, in Kenya pending judgments and rulings would be delivered via Skye and by

emails.[1] 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.

 

___________________________________________________________________

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

 

 

Author

Find the right Legal Expert for your business

The premier guide to leading legal professionals throughout the world

Specialism
Country
Practice Area
LAWYERS RECOGNIZED
0
EVALUATIONS OF LAWYERS BY THEIR PEERS
0 m+
PRACTICE AREAS
0
COUNTRIES AROUND THE WORLD
0

Join

who are already getting the benefits
0
Sign up for the latest legal briefings and news within Global Law Experts’ community, as well as a whole host of features, editorial and conference updates direct to your email inbox. Naturally you can unsubscribe at any time.

Online Casino Reviews

  • Freeroll Poker Tournaments For Real Money
  • Australian Online Casino Real Money
  • Best Slot App To Win Real Money
  • Online Casino Real Money Australia
  • Best Paying Online Pokies
  • Wizard Of Oz Online Slots
  • All Slots Casino Mobile
  • Best Online Poker App Real Money
  • Best Online Casino To Play Roulette
  • Is Online Casino Legal
  • Online Casino That Accepts Paypal
  • Play Roulette For Real Money
  • Slot Apps To Win Real Money
  • Real Money Slots Online Usa
  • Safe Online Casino
  • Wizard Of Oz Slots
  • Real Online Pokies Nz
  • Biggest Online Casino In The World
  • Online Casino Pay With Paypal
  • Online Casino That Accept Paypal
  • Online Casino Canada Real Money
  • 3 Card Poker Online Real Money
  • Online Slots Real Money Canada
  • Best Online Poker Sites For Real Money
  • Real Money Poker App Android Usa
  • How To Make Money From Online Casino Bonuses
  • Real Money Poker App Iphone
  • How To Play Blackjack Online For Real Money
  • Best Slots To Play
  • Top 10 Online Pokies
  • Best Poker Apps Real Money
  • Online Casino Legal
  • Best Payout Online Casino Uk
  • Win Money Online Slots
  • Online Poker Nj Real Money
  • How To Win Online Slots
  • Casino Gaming License
  • Play Real Pokies Online
  • Blackjack Sites For Real Money
  • Real Money Casino Games For Android
  • Best New Online Slots
  • Flaming 777 Slots Games
  • Online Blackjack With Live Dealers
  • How To Play Online Slots
  • Facebook Casino Games Real Money
  • Online Casino With No Minimum Deposit
  • How To Beat Online Slots
  • Online Casino License
  • The Big Payback Slots
  • Royal Vegas Online Casino Withdrawal
  • Online Casino Minimum Deposit 5
  • Online Pokies Real Money Australia
  • Las Vegas Usa Online Casino
  • Real Money Poker App Android
  • Wheel Of Fortune Slots
  • Game Of Thrones Slots
  • Online Poker Real Money Usa Legal
  • Best Online Casino European Roulette
  • Blackjack Online Real Money Paypal
  • Online Video Poker Real Money Usa
  • How To Create An Online Casino
  • Lucky Nugget Online Casino Mobile
  • How To Withdraw Money From Online Casino
  • Platinum Play Online Casino Download
  • Online Casino For Usa Players
  • Best Online Casino Usa Real Money
  • Online Roulette Real Money Usa
  • Best Real Money Poker Sites
  • Android Slots Real Money
  • How To Start An Online Casino Business
  • How To Start An Online Casino
  • How To Start An Online Gambling Site
  • Best Online Casino For Blackjack
  • Play Baccarat Online For Money
  • Online Pokies New Zealand
  • Best Slots To Play At Golden Nugget
  • Slots Of Vegas Online Casino
  • Best Online Pokies Site
  • How To Beat Online Roulette
  • New Zealand Online Pokies
  • Online Poker Mobile Real Money
  • Which Online Slots Payout The Most
  • Is Online Casino Legal In India
  • Online Casino Software For Sale
  • Best Online Casino For Craps
  • Hard Rock Casino Slots
  • Win Real Money Online Pokies
  • Online Casino With Highest Payout Percentage
  • Poker Apps With Real Money
  • Online Roulette Real Money Review
  • Full Tilt Poker Real Money
  • Online Casino 5 Dollar Minimum Deposit
  • Online Roulette With Real Money
  • Best Online Roulette For Real Money
  • I Migliori Casino Online Italiani
  • Best Payout Online Slots
  • How To Play Baccarat Online
  • Play Casino Card Game Online
  • Play Blackjack Online For Real Money
  • Best Paying Online Slots
  • Casino License Cost
  • Online Poker Real Money California
  • Safe Online Casino Australia
  • Online Roulette Australia Real Money
  • Online Poker Real Money Texas
  • Online Roulette Real Money Paypal
  • Online Slots Australia Real Money
  • Golden Nugget Online Casino Review
  • Casino Games To Win Real Money
  • Online Pokies Australia Real Money
  • Online Gambling Blackjack Real Money
  • Win Real Money Playing Slots
  • How To Win Roulette Online
  • Aristocrat Pokies Online Real Money
  • Hollywood Casino Online Slots
  • Play Online Keno For Real Money
  • What's The Best Online Casino
  • Triple Double Diamond Slots
  • Play Roulette Online With Real Money
  • Roulette Online For Real Money
  • Play Roulette Online Real Money
  • Best Online Pokies Real Money
  • Big Red Pokies Online
  • How To Win At Online Blackjack
  • What Is The Best Online Roulette Site
  • Real Money Online Pokies
  • Spin To Win Slots
  • Ruby Slots Online Casino
  • Wheel Of Fortune Online Casino
  • Spin Palace Flash Casino Online
  • Online Poker Real Money App
  • Online Casino With Paypal Deposit
  • How To Win At Online Roulette
  • Can You Win Real Money On Slot Apps
  • Is Ignition Casino Safe
  • Online Casino Blackjack Real Money
  • Online Casino Win Real Money Usa
  • How To Make Money Online Casino
  • Online Casino Real Money Reviews
  • Slot Games To Win Real Money
  • Jackpot City Online Casino Download
  • Online Pokies Real Money
  • Casino War Online Real Money
  • Online Casino No Minimum Deposit
  • Play Wheel Of Fortune Slots Online
  • Best Online Casino Game To Win Money
  • Online Casino Without Wagering Requirements
  • Online Slots For Real Money Usa
  • Legal Online Casino Australia
  • How Do Online Slots Work
  • Best Online Casino For Us Players
  • Online Play Casino Roulette Game
  • Online Blackjack Real Money Australia
  • Real Casino Games Real Money Online
  • Online Slot Machines Real Money Paypal
  • The Best Online Casino For Roulette
  • What Online Casino Pays Out The Most
  • Start Your Own Online Casino
  • Legal Online Casino
  • Online Live Roulette Casino Game
  • Playing Blackjack Online For Real Money
  • Online Penny Slots Real Money
  • Best Online Blackjack For Money
  • How To Win Online Roulette
  • Real Money Poker Sites Usa
  • Best Time To Play Slots
  • Online Keno For Real Money
  • Best Payout Online Slots Uk
  • Online Slots Real Money Reviews
  • Best Online Pokies Nz
  • What States Allow Online Gambling
  • Best Real Money Poker App
  • Online Slots To Win Real Money
  • Real Money Slots App Iphone
  • Jackpot City Flash Casino Online
  • Ignition Casino Legit
  • All Star Slots Casino
  • How To Play Online Casino
  • Real Time Gaming Slots
  • Online Video Poker Real Money
  • How To Play Roulette Online For Money
  • How To Win On Online Slots
  • Age Of Gods Slots
  • Online Real Casino Money Games
  • Best Online Slots To Play
  • Online Poker California Real Money
  • Is Jackpot City Casino Legit
  • How To Win At Online Slots
  • Play Poker For Real Money
  • Safe Online Pokies Australia
  • Best Way To Play Slots
  • How To Play Casino Online
  • Play Online Roulette For Money
  • Online Casino Australia Real Money
  • Which States Allow Online Gambling
  • Play Keno Online Real Money
  • How To Win Online Blackjack
  • Online Blackjack With Real Dealers
  • How To Open Online Casino
  • What Are The Best Online Slots To Play
  • Big Win Casino Slots
  • Spin Palace Online Casino Australia
  • Best Slots To Win On
  • Casino Slots Win Real Money
  • Slots Magic Online Casino
  • Blackjack Online For Real Money
  • Slot Machine App Win Real Money
  • Online Casino Not Paying Out
  • Slots That Pay Out Real Money
  • Online Pokies Australia Reviews
  • Online Casino Minimum Deposit 1
  • Jackpot City Online Casino Review
  • Live Dealer Baccarat Online Casino
  • Online Casino Apps For Android
  • Online Casino Paypal Deposit Australia
  • Online Casino With Live Dealer
  • How To Play Blackjack Online
  • Slots To Win Real Money
  • Wheel Of Fortune Online Slots
  • Play Quick Hit Slots Online
  • Can You Count Cards In Online Blackjack
  • Palace Of Chance Online Casino
  • How To Play Roulette Online
  • Good Slots To Play
  • Which Online Casino Pays Out The Most
  • Heart Of Vegas Casino Slots
  • Best Online Casino For Canadians
  • Australian Online Pokies Real Money
  • Mohegan Sun Online Casino Nj
  • Online Casino Live Games Best Uk
  • Best Online Casino Australia Reviews
  • Play Pokies Online Real Money
  • Best Online Casino For Usa Players
  • How To Win Online Casino
  • Play Blackjack For Real Money
  • Best Slots On Bovada
  • Online Keno Real Money Usa
  • Online Slots Real Money Paypal
  • Best Poker Sites For Real Money
  • Safe Casino Sites
  • The Best Online Slots
  • Play Keno For Real Money
  • Real Online Pokies Australia
  • Queen Of The Nile Slots
  • Mummys Gold Casino Online Casino
  • Play Keno Online For Real Money
  • Best Poker Websites Real Money
  • Lucky Nugget Online Casino Download
  • Best Online Casino For Roulette
  • Play Roulette For Money Online
  • Video Slots Mobile Casino
  • Best Time To Play Online Slots
  • Best Real Money Online Poker
  • Play Blackjack Online With Friends
  • Play Baccarat Online For Real Money
  • Is Silver Oak Casino Legit
  • Big Fish Casino Real Money
  • Can You Win Real Money On Caesars Slots
  • Game Of Thrones Slots Casino
  • Best Online Slots Payout Percentage
  • Play Online Pokies For Real Money
  • Play Pokies Online Australia
  • High 5 Casino Real Slots
  • The Best Online Pokies
  • Online Pokies That Accept Paypal
  • Heart Of Vegas Slots
  • How To Play Online Roulette
  • Best Poker App Real Money
  • Best Online Casino Fast Payout
  • Best Slots At Wind Creek Casino
  • Online Casino 10 Minimum Deposit
  • Play Roulette Online For Money
  • Us Real Money Poker Sites
  • How To Win In Online Casino
  • Best Online Pokies Australia Review
  • Where To Play Roulette Online For Real Money
  • How To Beat Online Casino Slot Machines
  • Highest Payout Online Slots
  • Best Paying Online Casino Slots
  • Golden Tiger Online Casino Review
  • Online Casino With Live Dealers
  • Play Roulette Online For Real Money
  • Best Slots To Play At Casino
  • Slot Machine Games Win Real Money
  • Most Popular Online Casino Games
  • Casino Slots App Real Money
  • Online Casino Real Money Canada
  • Online Real Money Pokies
  • Online Roulette Game Real Money
  • Online Casino Roulette Real Money
  • Best Place To Play Roulette Online
  • Online Casino Book Of Ra Paypal
  • Online Blackjack With Real Money
  • Play Online Blackjack For Real Money
  • Is There A Slot Machine App For Real Money
  • Royal Vegas Online Casino App
  • Best Casino Slots To Play
  • Most Popular Online Slots
  • Best Way To Win At Slots
  • Slots You Can Win Real Money
  • Play Roulette Online Real Money Usa
  • Online Casino Real Money Paypal
  • Online Casino Australia Legal
  • Treasures Of Troy Slots
  • Online Casino For Us Players
  • Where Can I Play Blackjack Online For Real Money
  • Online Casino Paypal Book Of Ra
  • Online Roulette For Real Money
  • Best Online Blackjack Real Money
  • Poker App For Real Money
  • Jackpot Magic Slots Facebook
  • Best Online Casino Real Money Usa
  • Best Online Casino New Zealand
  • The Four Kings Casino And Slots
  • How To Play Slots Online
  • Best Online Pokies Australia
  • Usa Online Slots Real Money
  • Real Money Casino Android App
  • Online Slot Machines That Pay Real Money
  • Online Pokies Real Money Nz
  • Online Pokies Real Money App
  • Play Igt Slots Online
  • Best Casino Slots To Win Money
  • Online Casino Business For Sale
  • Play N Go Slots
  • Poker Apps For Real Money
  • Lucky Slots Real Money
  • All Slots Online Casino
  • Best Online Pokies Real Money Australia
  • Online Pokies Win Real Money
  • Best Online Casinos For Roulette
  • Pay Slots For Real Money
  • Best Online Poker Real Money
  • Slots App Win Real Money
  • Play Online Roulette For Real Money
  • Is Ignition Casino Legit
  • Wheel Of Fortune Slots Online
  • Lotsa Slots Real Money
  • Video Poker Online Real Money
  • Online Slots Usa Real Money
  • Play Blackjack Online Real Money
  • Jackpot City Online Pokies
  • Video Slots Online Casino
  • Is 888 Casino Legit
  • Online Slot Games That Pay Real Money
  • Prepaid Visa Card Online Casino
  • How To Stop Online Gambling
  • Best Slots To Play Online
  • Online Blackjack For Real Money
  • Slot Apps For Real Money
  • Mobile Slots Win Real Money
  • Newsletter Sign Up

    About Us

    Global Law Experts is dedicated to providing exceptional legal services to clients around the world. With a vast network of highly skilled and experienced lawyers, we are committed to delivering innovative and tailored solutions to meet the diverse needs of our clients in various jurisdictions.

    Social Posts

    See More:

    Contact Us

    Stay Informed

    Join Mailing List

    GLE