Registration of Trade Marks in Nigeria – Extra-statutory requirements?

Here's a guest post by Chijioke Ifeoma Okorie, who is currently reading for an LLM in Internet Law and Policy at the University of Strathclyde, Glasgow:

In July 2012 the Nigerian Registry of Trademarks, Patents and Designs announced here that it will only accept electronic applications for registration of trade marks, patents and designs filed by accredited agents. The Registry also commenced a compulsory accreditation exercise whereby “law firms, stakeholders and potential registrants” who wish to apply for registration or act as agents are accredited by the Registry upon payment of an annual accreditation fee (N23,500 for firms and N13,500 for individuals), completion of the requisite form and provision of supporting documents such as bio-data and passport photograph of principal partner, company information etc. 

Upon completing the Accreditation Form, submitting the requisite documents and paying the accreditation fee, a firm is provided with log-in details with which future transactions with the Registry can be done.  A list of accredited agents can be found here. 

However, some law firms under the auspices of Intellectual Property Lawyers Association of Nigeria (IPLAN) took umbrage at the accreditation exercise and by an Originating Summons in Suit No. FHC/ABJ/CS/579/2012 sued the Registrar of Trademarks as first defendant and the Minister for Trade and Investments as second defendant. 

Here are some of the issues raised by IPLAN: 

§  That the mandatory accreditation imposed by the Registrar on Agents and Legal Practitioners is a violation of the Trade Act and Legal Practitioners Act; 

§  That neither the Registrar nor the Minister can validly increase or prescribe additional fees under the Trade Marks Act and the Patent and Designs Act without their prior publication in the Federal Gazette, by virtue of the provisions of Section 45 of the Trade Marks Act. 

IPLAN is asking the Court to declare the mandatory accreditation exercise a nullity, to set aside the Registrar’s directive in that regard and to compel the defendants to cease the purported accreditation and the collection of additional fees other than the application fees prescribed by law. The defendants have joined issue with the plaintiff and have applied to withdraw the processes earlier filed and file fresh processes. 

No interlocutory injunction was sought so the Registry has continued with the accreditation exercise and electronic filing of applications. In fact, the first edition of the Online Trade Mark Journal containing list of marks sought to be registered, was released on 25 March 2013 and is being sold for N12,000. 

In my view, rather than increase the cost of filing applications through the requirement of payment of annual accreditation fees (likely to increase with the “cost of inflation”) and over-burdening the otherwise easy process of electronic filing by the same accreditation exercise, would the country and indeed, foreign investors not be better served by reduced filing fees for electronic filings? That is the case with countries such as the United States, the UK etc. including filings with WIPO. 

Given that the Trade Marks Act does not demand that an applicant for registration should be a legal practitioner, should the Registry be concerned with who an agent is? Why should separate accreditation fees be paid to both the Registry and the Corporate Affairs Commission (CAC) when the both belong to the same supervisory body - the Ministry of Trade and Investment ? In fact, South Africa has both functions (company registration and IP registration) in the same entity – the Companies and Intellectual Property Commission. 

Other issues that piqued my interest (and not necessarily raised in IPLAN’s suit) include: Is the accreditation an appropriate proof of expertise in trade mark matters, given that the requirements for accreditation are minimal and not even verified? What will be the position if a prospective applicant obtains accreditation and has no further marks to register? Will a legal practitioner who has obtained accreditation through his employers require fresh accreditation should he become a sole practitioner? Can his erstwhile employers substitute his name with another employee given that the erstwhile employee has the requisite password to practice with his former employer’s accreditation status? 

What will the Court decide, given that electronic filing is ongoing and it is possible that the joys and ease of electronic filing will drown the “unsavoury” accreditation fees. Indeed, I have always wondered about a similar exercise which is compulsory for persons and firms wishing to deal with the CAC. 

Again, is IPLAN the proper party to challenge the accreditation exercise given that, by its name alone, it creates a separate class of legal practitioners whom the public may regard as IP experts. Put differently, does IPLAN registration and membership requirements not have the same effect as the Registry’s accreditation exercise? Even if on a smaller scale? 

What do readers think?