First Come, First Serve in Nigeria

Global brands having acquired the major success in the western and Asian markets are now focusing their sights on Africa. Africa's steady growth in urbanisation figures and rapidly expanding middle class makes its retail market an attractive investment opportunity to brands looking to expand their client bases. A 2014 report by GEOPoll states that Africa is home to 100,000 dollar millionaires, an increase in 7.4% over last year, moreover, the number of Nigerian Millionaires is expected to grow by 47% over the next four years.

In 2015 Nigeria reached a pinnacle point being Africa’s largest economy by gross domestic product (GDP), being the result of contributing factors as earlier explained. To understand this financial independence and the avenues all leading to one common goal, we breaking down this flourishing country into sectors: Manufacturing, Mining, Pharmaceutical, Chemical, Biotech, to name a few. Nigeria contributes to the electronics & software sector firstly by having the most mobile users in Africa by far (167 million, followed by Egypt with 92 million), as well as providing international connectivity with the SAT-3/WASC fiber optic submarine cable (CIA Factbook). Africa’s oil mining sector is mainly headed by Nigeria, whilst 65% of this country’s electricity is from fossil fuels and 33% is from hydroelectric plants. These powerful solutions are an indication of strength in infrastructure, local government investments, and international partnerships.

This surge in the growing middle class along with recent technological advances, cheaper shipping costs and the internet has meant that Africans have been exposed to and are demanding for the expansion of retail the options available locally and embracing international brands.

Africans exposure to international brands has made it easier for big brands such as fast food chains KFC and Dominos Pizza to move into the African Market as the goodwill and a well established reputation exists before they even enter the market. While banking on a brands reputation preceding them is an incentive to taking the chance and moving into the African market, a great threat lie’s at the heart of Africa’s largest economy Nigeria. Brand owners seeking to rely on trade mark registration in Nigeria must be aware that Nigeria follows the first to file rule not only for patents but applies it to trade marks as well.

The first to file rule means that the first person to apply to and successfully registers an IP right automatically acquires not only title over the said trade mark but priority over any other person who has been using that trade mark prior to the registration of that mark, irrespective of whether the mark is a well known mark, has acquired a reputation or goodwill through use of the mark for many years.

Nigeria has a particularly strict application of the “first-to-file” rule, add to that the little to no recognition of common law rights (for example rights acquired through use), regardless of whether you have built up a reputation, the loyal clientele, the emotional attachment to your differentiated service or goods and the situation becomes quite dire. What is even more discouraging, is that this strict application is backed by judicial precedent such as this examples below.

In the case of Intel Corporation V Dusayo Investment (NIG) Ltd. & Registrar of Trademarks, 2006, The Federal High Court Held that Intel cannot register its famous trademark in the same class (09) as the defendants since the defendants filed and registered the trademark before them in Nigeria. Same decision was reached in the older case of Nabisco Inc V Allied Biscuits Company Limited 1998. The trademark in dispute was the well-known mark “RITZ and Device” in class 30 between a Nigerian company and a multinational. The Registrar of trademarks held that since the Nigerian company applied and registered the said trademark before the multinational, the application of the multinational must be refused. The Supreme Court upheld the Registrars decision.

Taking in the current state of affairs in Nigeria, it is imperative that brand owners to seek registration in Nigeria as priority when preparing and/or planning to enter into the market especially in view to avoid losing their rights in this lucrative market.