Nigeria: IP and Brand Protection Issues for Spirit Producers

The Market

In 2011, the United States Department of Agriculture (USDA) estimated that the spirit market in Nigeria was worth about $2 billion, with imports accounting for $500 million of the market. Consisting mainly of whiskey, brandy, rum, gin, schnapps and vodka, the spirit market in Nigeria is one of the few sectors where local producers take the lead by occupying the majority of the market share (75%).

Some of the top spirit brands sold in Nigeria are produced by Intercontinental Distillers Ltd., Diageo (through Guinness Nigeria), Nigeria Distilleries Limited, Pernod Ricard (signed a distribution agreement with the CFAO Group in May, 2013), Davide Campari-Milano S.p.A, Louis Vuitton Moët Hennessy – LVMH (through GDN), to name a few.

As brands are an integral part of the spirit business, producers doing business in Nigeria must familiarize themselves with the laws, guidelines and regulations relating to advertising, copyright, trademark registration, protection and enforcement and the NAFDAC product registration.

First to File: Registration of Class 33 Trademarks

In dealing with trademark registrations, Nigeria uses the Nice Classification (which places spirit drinks in class 33) and adopts the ‘first to file’ rule. This means that the first person to file a trademark application with the trademark registry after satisfying all the filing requirements will be granted the registration rights. Prior use of a mark in commerce generally affords little protection to a trademark applicant in Nigeria. This is different from what operates in the U.S., where the USPTO considers the first to use a trademark in commerce. The result is that where spirit producers fail to register trademarks with the Trademarks Registry in Nigeria, they may be forced to change their name or logo in order to do business in Nigeria.

Spirit Advertising

Advertising of spirit drinks in Nigeria is overseen by the Advertising Practitioners Council of Nigeria (APCON) subject to the approval of the Minister of Health in cases that relate to food, cosmetics, beverages and drugs. APCON provides vetting guidelines that state that the entire content of an advertisement (including the spoken or written words & numbers, visual representations, music and sound effects) relating to food and drinks must be vetted prior to airing or printing for public distribution.

As an alcoholic beverage, advertisement of spirit drinks cannot be aired on radio between 6:00am and 8:00pm and between 6:00am and 10:00pm on television networks.  Such ads cannot be displayed on billboards near schools, hospitals, sports arenas or places of worship (a distance of at least 200 meters is required).  In addition, the Nigerian Code of Advertising Practice and Sales Promotion, the Spirit Drinks Regulation (2005) and the Wine Regulation (2005) all provide that radio, television or print media advertisements of alcoholic beverages are not be permitted in children’s programs and children, sportsmen, or expected mother’s cannot be used as models to advertise such products.

False or Misleading Descriptions

The content of advertisements of spirit drink cannot be misleading and must be free of health claims. While a coined or fanciful name may be used, the name cannot be misleading and must be accompanied by a descriptive term. Spirit producers may, in addition to a fine, be banned from participating in any advertising campaign for about 12 months if they are found guilty of false advertising.

Registration with the National Agency for Food and Drugs Administration and Control (NAFDAC)

Every spirit drink manufactured, imported, exported, advertised, sold or distributed in Nigeria must be registered with the NAFDAC. Submission of copies of the product registration certificate issued by the NAFDAC is one of the mandatory requirements for applying to the APCON for the vetting of an advertisement.

As spirit drinks are classified as food by the NAFDAC, producers must comply with all the regulations and guidelines issued by the NAFDAC with regard to labeling of the products, including the requirement that the main panel of the label carry a declaration of the actual percentage by volume of absolute alcohol contained in the drink.

Copyright, Spirit Artworks and Advertisement Scripts

For the spirit business, artwork used on a label or certain textual elements may be copyrightable and may also serve as a trademark, if consumers recognize the design as the source of the product.

In cases where the artwork is copyrightable, a key concern for spirit producers is determining who owns the copyright in the work.  In most cases, spirit producers hire artists to create original artwork for their product labels. In such cases it is in the interest of the producer to have a written agreement signed by the artist that vests ownership of the copyright in that work with the spirit producer as a work made for hire. Spirit producers may also obtain such rights through an assignment.  In the absence of a signed agreement, ownership disputes may arise and the artist may seek to reproduce the artwork for other business purposes.

Again, to the extent a producer owns a copyrightable artwork or advertisement script, it may seek registration with the Nigerian Copyright Commission, through the Copyright Notification Scheme.  There are substantial benefits to obtaining a registration, although it is not required by law.

Industrial Designs: Protection for Trade Dress

In dealing with spirit drinks, the trade dress is the combination of the label, wrapper, container and packaging used by a particular brand or spirit producer. This usually includes the color, shape, size, texture, and color combination.

Bottle designs used for spirit drinks can be protected in Nigeria as industrial designs. When an industrial design is protected by  registration, the owner is granted the right to prevent unauthorized copying or imitation by third parties. This includes the right to exclude all others from making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied.

Relevant Laws and Regulations: Trademarks Act Cap. T13 LFN 2004, Copyright Act Cap. C28 LFN 2004; APCON Code of Advertising and Promotion guidelines; Consumer Protection Council Act; NAFDAC Act Cap. N1 LFN 2004; Spirit Drinks Regulations 2005; Wine Regulations 2005; Pre-Packaged Food (Labelling) Regulations 2005; Advertising Practitioners (Registration, etc) Act;  Merchandise Marks Act, Cap. M10 LFN 2004; APCON Vetting Guidelines; and the Food, Drugs and Related Products (Registration, etc) Act, Cap. F33 LFN 2004.

This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.