Thursday, 30 May 2013

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?


goldenrail said...

When I first heard about the new requirements for accreditation to file TMs, I sort of automatically assumed it was to keep non-Nigerian lawyers from taking Nigerian lawyers' business. On When I gave it a second thought, the requirement to be licensed by the Nigerian Bar in order to practice law in Nigeria seemed like it would serve this purpose. But then, M. Okorie pointed out that the Nigerian Trademark Act doesn't require an applicant to be an attorney.
Upon deeper reflection, I can only proffer these reasons for the change:
1. More Naira for the government
2. An attempt to protect the electronic system from false or spammy registrations through the use of login registrations that can be tracked
3. The imposition of certain qualifications that appear in the accreditation form
I suspect most of us are leaning towards number 1 at the moment...

Kingsley said...

Chijioke, thanks for bringing this case to our attention. Last year I was asking similar questions myself, in particular, the legality of the scheme I was also concerned that the list of accredited agents doesn't really tally up for some reason as I know of a leading IP firm not listed there

Hope IP practitioners in Nigeria can (anonymously) comment on this development.

Kingsley said...

Aurelia, I had the same initial feeling i.e. protecting local practitioners. On second thought, I also felt that the aim was to introduce a vetting process for the benefit of both the Registry & TM owners. Let's hope that the accreditation scheme is swiftly solving the problems it was initiated to tackle.

goldenrail said...

Dear Kingsley, thank you for tempering my cynicism ;)
I hope you're correct about the scheme resolving the problems it was initiated to tackle. I wish we knew what those problems were; it'd be so much easier to discuss the issue and probably make the fees easier to swallow.

Ikenna Okorie said...

You'd wonder why the Trade Marks Registry won't rather apply their efforts at online Registration of Trade Marks rather than online accreditation of persons it interfaces with. However, I will not be surprised if IPLAN itself lacks legal standing to challenge this regulation? Ironically, it would seem both IPLAN and the Trade Marks Registry seem to be segregating the practice of Trade Marks Law in there own spheres.
Ultimately, the Regulation is unhelpful, it focuses attention on what is of less importance and increases the costs of persons seeking to register their Trade Marks since the incidence of the registration costs will ultimately be passed to such persons....meanwhile we should be trying to reduce the cost of doing business in Nigeria.

Ikenna Okorie said...

The Trade Mark Registry seems to be majoring on the minors with this one. I also doubt if IPLAN has legal standing to challenge the regulation anyway. Both the TMR and IPLAN appear to be seeking to segregate participants for Trade Marks' affairs, an unhelpful prospect that would constrict the registration process. Regrettably, it is the Trade Mark owner that will bear the incidence of the costs of the agents' of reducing the cost of doing business in Nigeria. Now you can't be sure of using the same lawyer to register a company and a trademark!

IPKenya said...

Very encouraging news!

We are currently discussing the creation of an IP Association in Kenya such as IPLAN to deal with a host of IP-related issues.

@Ikenna Okorie: Why do you doubt IPLAN's legal standing in this matter?

Chinasa said...

Don't really know what mischief the accreditation requirement seeks solve. Does the Registry ever refuse an application for accreditation? Didn't the previous process have avenues for verifying persons undertaking registrations? It's simply a fund drive which should be challenged and I think IPLAN should verify that it has the locus to maintain the suit. As noted by Ikenna, that is some thin line it is walking.

Kingsley said...

Hello Aurelia, well, only if we all knew why it was introduced in the first place to begin with :-)

Based on what is stated on the Registry's website, it appears no one (including legal practitioners) is actually barred from dealing with the Registry

I guess the general sentiment on this scheme is that of fundraising. Let's hope the sums are sufficient enough to build & maintain an enviable website for the Registry.

Ifedayo said...

Chijioke, this is a very insightful read. What worries me is the doubtful and fund-motivated accreditation exercise.

Sakura said...

I would agree with this process much more if there was some sort of transparency around what the funds would be used for, e.g. improvements at the Registry to allow applications and other requests (such as certified copies of certificates) to be processed faster and at a high level of quality. It seems a little odd to me that the Registry should be trying to ensure the trade mark firms are accredited, when their own processes seem to lack quality.

Uba Babs said...

I don't really know what mischief the accreditation requirement seeks to resolve. Does the Registry ever refuse an application for accreditation? Didn't the previous process have ways for verifying those undertaking registrations? It's simply a fund drive which should be challenged and I think IPLAN should verify that it has the locus standai to maintain the suit.