Monday, 25 November 2013

Regulation of IP practitioners in Nigeria? IPLAN v. IP Registry & another: The Verdict


Back in July 2012, this Leo was delighted to learn about the milestone reached by Nigeria's Trademarks, Patents and Designs Registry (IP Registry) in its quest to embrace the digital life - like others. As usual, this Leo had a thing or two (or more) to say about this development. In particular, he was curious as to the legality of the accreditation process initiated by the Registry. Fast-forward to May 2013, we heard about the legal action (Suit No. FHC/ABJ/CS/579/2012) against the Registry by the Intellectual Property Lawyers Association of Nigeria (IPLAN) as reported by Chijioke Ifeoma Okorie.  


So, did this case survive it in Court? Surprisingly, yes it did. But did the Claimant win on all its points? What powers do the Registry and/or the responsible Ministry have over IP law and practice in Nigeria? Below is a case summary by Mr. Folarin Aluko, Counsel for the Claimant - in his own words. (A copy of the judgment can be found here)

BACKGROUND
The Nigerian Trademarks, Patents and Designs Registry announced in June 2012, the launch of its online filing and registration platform effective on the 16th of July, 2012. The Registry also announced the discontinuance of manual filing at the Registry. Whilst the introduction of the online filing was acknowledged as a positive development, a peculiar feature of the Registry’s proposed online filing system was that it was introduced alongside an ‘accreditation’ scheme which was to serve as a means of restricting and regulating access to Industrial Property Registries. This accreditation scheme was considered controversial and irregular by a significant number of Intellectual Property Practitioners. Another irregularity that accompanied the online filing portal was an additional surcharge of 4-figure “transaction” fees payable per application filed.

ARGUMENTS
The Intellectual Property Lawyers Association Nigeria ("the Plaintiff"), represented by Mr. Folarin Aluko, filed an Originating Summons at the Federal High Court, Abuja challenging the purported accreditation scheme and the additional surcharge on the Registry’s online services. The Plainitiff asked the Court to interpret the relevant provisions of the Trademarks Act ("TMA"), the Patents and Designs Act, the Legal Practitioners Act and the Regulations made pursuant to these laws viz the 2 irregular aspects of the Registry’s online filing platform.

The Plaintiff argued that neither the Registrar of Trademarks, Patents and Designs (1st Defendant) nor the Minister for Trade and Investment (2nd Defendant) could introduce a mandatory accreditation scheme, as such would be ultra vires the powers granted to the Minister by the Trademarks Act. The Plaintiff argued that the Registrar is bound to recognize an Agent appointed by an applicant subject only to the provisions of Regulation 66 of the Trademark Regulations. The Plaintiff further argued that a literal interpretation of the section 45 (1) of the TMA which gives the 1st and 2nd Defendants the powers to regulate the “practice under the TMA” cannot be interpreted to grant a power to regulate Practitioners and/or Agents at the Registry. 

On the issue of additional fees, the Plaintiff argued that pursuant to S 45 (2) of the Trademarks Act, the introduction of additional fees would be null and void and of no effect unless and until such fees are first included in Regulations which are published in a Federal Gazette. In reply, the Registrar of Trademarks, represented by Mr. Edet Otu argued that the introduction of the online filing platform was made pursuant to Section 45 (1) of the TMA which gives the Minister the power to make regulations for the practice under the TMA. The Registrar also argued that the decision to discontinue manual filing had been reversed, following the institution of the Plaintiff’s suit, and that it had removed all restrictions to both manual and online filing platforms. The Registrar thereafter concluded it's argument by contending that the additional fees charged for online filing were paid for voluntarily by applicants who wished to take advantage of the online filing system and it therefore urged the court to uphold the additional charges for online filing.

JUDGMENT
Delivering His judgment, Justice A.F.A Ademola adopted the Plaintiff’s issues for determination:
1. Whether having regard to the separate and combined provisions of Section 45 & Section 66 of the Trademarks Act; Section 2 (1) of the Legal Practitioners Act; Regulations 2 (1) and 16 (1), (2) and (3) of the Trademarks Regulations; the 1st and/or 2nd Defendant may validly necessitate and compel the mandatory accreditation of Agents and Legal Practitioners as a condition for Recognition by the 1st Defendant?
2. Whether the mandatory accreditation of Agents and Legal Practitioners by the 1st Defendant commencing on the 16th of July 2012 at the Trademarks, Patents and Designs Registry is ultra vires, null and void?
3. In view of Section 45 (1) (e) and 45 (2) of the Trademarks Act, whether the 1st and/or 2nd Defendants may impose additional administrative fees on applications brought under the Trademarks Act and the Patents and Designs Act without first publishing same in a Federal Gazette?
4. Whether the additional fees imposed by the 1st and/or 2nd Defendants from the 16th of July, 2012 on applications brought under the provisions of the Trademarks Act and the Patents and Designs Act is irregular, ultra vires, null and void?

The Plaintiff asked the Court for the following reliefs:
1. A DECLARATION that the mandatory accreditation imposed by the 1st Defendant on Agents and Legal Practitioners is in violation of the Trademarks Act and the Legal Practitioners Act and Regulation and therefore ultra vires, void and of no effect whatsoever.
2. AN ORDER setting aside the 1st Defendant’s directive mandating the accreditation of Agents and Legal Practitioners.
3. AN ORDER of injunction directing and compelling the 1st and 2nd Defendants to cease and desist from continuing the purported accreditation.
4. A DECLARATION that by virtue of the provisions of Section 45 the Trademarks Act, neither the 1st nor 2nd Defendant can validly increase or prescribe additional fees under the Trademarks Act and the Patents and Designs Act without the prior publication of same in a Federal Gazette.
5. A DECLARATION that the additional fees imposed by the 1st and/or 2nd Defendants on applications filed at the Trademark, Patents and Designs Registry are in violation of the provisions of the Trademarks Act, the Patents and Designs Act and the Trademark Regulations and therefore Ultra Vires, illegal, void and of no effect whatsoever.
6. AN ORDER of injunction restraining the 1st and 2nd Defendants from collecting additional fees other than the application fees prescribed by Law. 

DECISION
Deciding the 1st and 2nd questions on the power to accredit, the Court agreed with the arguments of the Plaintiff's counsel by holding that neither the 1st nor the 2nd Defendant has the power to introduce a mandatory accreditation or introduce additional criteria to regulate Practitioners and Agents. The Court however declined to grant an injunction restraining the 1st and 2nd Defendants from introducing an accreditation scheme based on the 1st Defendant’s statement on oath that it was neither preventing nor restricting access to the Registry. The Court also held that by introducing the online filing system, the Minister acted pursuant to the powers conferred by S 45(1) of the Trademarks Act.

In deciding the 3rd and 4th questions which addressed the additional fees charged by the Registry for online filing, the Court held that upon a careful perusal of the evidence and the relevant laws, it is obvious that neither the Registrar nor the Minister may charge additional fees for either manual or online filing without first complying with the requirements of the law.

The learned trial Judge also held that all additional fees charged for the Registry’s online filing are ultra vires, irregular, null and void and of no effect. His Lordship, Justice Ademola, consequently granted an injunction restraining the Registrar and the Minister of Trade and Investment from charging additional fees for its services (manual or online) other than the fees currently prescribed by law.

CONCLUSION
In summary, this judgment is significant to the practice and development of Intellectual Property Law in Nigeria because the Federal High Court has helped to define and limit the powers of both the Minister of Trade and Investment and the Registrar of Trademarks, Patents and Designs with regards to the accreditation of Practitioners and Agents. The Federal High Court has given life to the letter of the law by insisting on due process and supremacy of the law. We are confident that this judgment marks the beginning of an era of the long-awaited IP reform in Nigeria.

3 comments:

Obinna O. said...

This is indeed a watershed in the development of intellectual property law and practice in Nigeria. I am particularly excited about that professionalism demonstrated by the court in its prompt delivery of justice. The decision portends a bright future for IP practice in sub-saharan Africa's commercial hub.

Kevin Ebhojie said...

Sadly practitioners still have to deal with the nuances of the Registrar of Trademarks and the snail paced processing of applications which we were hoping will be addressed by this "automation". In practice the system is a monopolistic machinery introduced to serve a few interests. Searches, despite additional technology charges, must still be terminated manually by a physical agent in Abuja. So after you pay for an online search you are then asked to direct your search to the registry despite the now multi- layered fee regime, you immediately get the sinking feeling that you have just been bilked.

Archibong Ene said...

Just to buttress Kevin's comments, i think the real problem at the Registry is the Registry staff. Now with automation the implication is that most of the staff would become redundant and would ultimately loose their jobs. It's crazy to fathom that in this day and age to register a trademark, an application would have to pass through about 15 registry staff. God help you if one of them is away from the office your application will see no movement until that person gets back. The govt. needs to redeploy these non essential staff elsewhere or else they will continue to be a disservice to the automation initiatives at the registry.