PRIORITY CLAIMS AND INTELLECTUAL PROPERTY RIGHTS IN NIGERIA
The importance of protection of trademark in these modern times is well known. In Nigeria, Protection of trademark rights is concluded when a mark has undergone the complete registration process and the certificate of registration issued by the Trademark Registry. A plethora of advantages avail a proprietor of a registered trademark including exclusive right over use of the trademark and prevention of a third party from taking advantage of the reputation of the trademark without authorization.
However, Trademark protection is territorial and must be filed in each country where protection is sought. The accruing rights and protection were available to a registered trademark within the jurisdiction. This created some problems where identical or similar trademark registered in a particular jurisdiction and has garnered goodwill can be taken advantage of by another Applicant in a different jurisdiction. The prevalence of this mishap has been curbed through the introduction of right of priority encapsulated under several treaties.
The first of these treaties, the Convention for the Protection of Industrial Property, as amended (the Convention) was adopted in 1883. Under this system, the registration of a mark in one jurisdiction that is party to the convention automatically grants subsequent applications made in other party states, priority over other identical or similar marks in the same class using a single application, so far as the other applications are filed within a specified time frame. The major advantage is that the subsequent applications will be regarded as if they had been filed on the same day as the first application.
Nigeria being a signatory and party to the convention had incorporated the convention into its legal system. However, both the Trademark and Patent laws of Nigeria requires the relevant Minister (Trade and Investment) to make a declaration to be published in the Federal Gazette specifying countries that will be accorded “Convention Country” status for purposes of filing convention applications and claiming priority rights. The Minister is yet to make this declaration in respect of Trademarks in Nigeria, though the necessary declaration has been made in the case of Patents and Designs since 1971, recognizing all the Paris Union member-countries as Convention Countries.
As such and as a matter of law, no priority claim ought to be accorded to trademark applications in Nigeria, however in practice, a priority claim can be included at the filing stage of a trademark application, but since it does not have its rooting on a functional law, it is merely ceremonial at best. As a result, Nigerian IPR holders or foreign holders with interest in the Nigerian market are severely limited in the scope of the protection that is available to them under the current legal framework in the country.
A critical question is why a legislation of such importance has not been fully implemented in a country that boasts of having the highest number of trademark applications annually in Africa. The non-implementation of the convention has now caused the recent calls by stakeholders not only for the Minister to make the necessary declaration in the case of trademarks, also for the Parliament to domesticate all IP related treaties that Nigeria is a party to and amend the very outdated trademark law of Nigeria. If the necessary actions are not taken, albeit on time, these deficiencies in the system will continue to put a question mark on the readiness of the Nigerian government towards protecting IPRs, diminish investors’ confidence and reduce ease of doing business in the country.
Therefore, it would be of utmost importance for the Nigerian Government to take the necessary steps towards protecting IPRs in Nigeria by creating the necessary legal and administrative frameworks for implementation and enforcement of IPRs.