NLIPW Trademarks Law Volume 2 Number 2
(Trademark Registry’s Online Portal Accreditation)
November 23, 2013
Judgement delivered on Monday, October 31, 2013
Citation: 56 NIPJD [FHC. 2013] 579/2012
Suit No. FHC/ABJ/CS/579/12
In May 2012, the Plaintiff (Registered Trustees of Intellectual Property Lawyers Association Nigeria) filed an action against the 1st and 2nd Defendants (the Trademark Registrar and the Honorable Minister for Trade and Investment respectively) challenging the Defendant’s announcement and subsequent requirement that from July 16, 2012, only accredited agents and lawyers would be allowed to make use of its online registration portal.
The Plaintiff’s counsel, Mr. Folarin Aluko, challenged the imposition of additional administrative fees on applications brought under the Trademarks Act and the Patents and Designs Act, without publishing the same in a Federal Gazette. The Plaintiff also challenged the Defendant’s ability to impose accreditation of agents and legal practitioners. According to the Plaintiff, the mandatory accreditation imposed by the 1st Defendant on agents and legal practitioners was in violation of the Trademarks Act and the Legal Practitioners Act and Regulation.
Section 2(1) of the Legal Practitioners Act:Subject to the provisions of this Act, a person shall be entitled to practice as a Barrister and Solicitor, if and only if, his name is on the roll call.
The Plaintiff therefore sort an order setting aside the 1st Defendant’s directive mandating the accreditation of agents and legal practitioners; an injunction restraining the Defendants from continuing the accreditation of agents and legal practitioners; and an injunction restraining the Defendants from collecting additional fees other than the application fees prescribed by law. Relying on the provisions of Section 45 of the Trademarks Act, the Plaintiff asserted that neither the 1st or 2nd Defendant could validly increase or prescribe additional fees.
Section 45 of the Trademarks Act45. (1) The minister may make regulations –(a) for regulating the practice under this Act, including the service of documents;(e) for prescribing the fees to be paid in respect of applications, registrations and other mattes under this Act;(i) generally for regulating the business of the office of the Registrar and all things by this Act placed under the direction or control of the Registrar or the Minister.(2) Regulations under this section shall not have effect until published in the Federal Gazette.
In its defence, the 1st defendant asserted that by virtue of the above Section 45 of the Trademarks Act, the 2nd Defendant was empowered to make regulations and that the accreditation requirement in no way prevents the Plaintiff from manual or regular filing of applications.
While the Court, per Ademola J., held that the 2nd Defendant in exercise of the powers conferred on him by Section 45 of the Trademarks Act can validly make regulations for the practice of trademarks in Nigeria, the court found that there must be a publication in the Federal Gazette as a condition precedent to imposing administrative fees on applications brought under the Trademarks Act and the Patents and Designs Act, to be complied with by the Defendants.
In the absence of such publication, the court held that neither the 1st or 2nd defendant can validly increase or prescribe additional fees under the Trademarks Act or the Patents and Designs Act. The Court also held that the additional fees imposed by the 1st and/or 2nd Defendants from July 16, 2012 are null and void and of no effect. An injunction was issued restraining the 1st and 2nd Defendants from collecting additional fees other than the application fees prescribed by Law.
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.
This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.