The Upshot of COVID-19 on Intellectual Property Matters in Nigeria by Chidiogo Molokwu

changes ahead

The unprecedented outbreak of Corona virus (Covid-19) has brought into limelight and emphasized the need for and importance of technology in business. Prior to the pandemic, technology had permeated business operations in different sectors although some sectors remain inclined to stick to traditional methods. The legal practice industry is one of such examples. Although, there is some traction in the use of technology in practice however, this has not happened at top gear. Intellectual property law practice in Nigeria is one of such distinct cases. In practice, although technology is used in the filing of trademark and patent matters, this does not however suggest that the manual filing has altogether been abolished. The Trademarks, Patent, and Designs Registry has made progress in transiting from manual to online filing. Although they operate a system of parallel existence of both manual and online filing.

It is important to note that there are some operational issues arising from online filing of trademarks, patents, and designs in Nigeria. The use of technology only ends with the filing of trademarks, issuance of Acknowledgment Notices and payment of official fees. With respect to the other stages of registration such as issuance of Acceptance Notice, publication of the trademarks journals and the issuance of the Registration and Renewal certificates, the Intellectual Property practitioner or the Applicant has the onus of following up with the  Registry physically to confirm the status of the trademark application or comply with other administrative requirements, such as filing of written representations and so on.

With Covid-19, these operational issues have come to the fore and  emphasized the need for the  Registry to fully explore the use of technology in all stages of filing and registration of trademarks and patents, and for quick and effective dispensation of trademark opposition matters. This article seeks to highlight some of the operational issues and proffers recommendations on possible approaches to address these issues.

In the event of this current pandemic, the following were the operational lags observed in the Trademarks, Patents, and Design processes:

Delay in processing and issuance of Documents at the Trademarks Registry

Due to the ongoing covid-19 measures which requires public offices to scale down their operational activities, has affected the Registry, which is partially open with only senior level officers performing skeletal services. Thus, these measures have caused delays in the issuance of Acceptance Notices, Trademark Registration and Renewal Certificates, etc. Consequently, there is a halt on the activities of brand owners as well as loss to Intellectual property practitioners who generate income from providing these services.

Opposition hearing

Trademarks opposition hearings are usually conducted physically before the Trademarks Tribunal. Following the outbreak of Covid-19 and due to the fact that the Registry is not fully operational, the Registry is yet to issue any hearing dates or notices for the hearing of pending trademark opposition matters. All scheduled hearings have been suspended and thus there is an increase in backlog of matters pending before the Trademarks Tribunal. Consequentially, there halt on activities of brand owners who otherwise would have received a decision in respect of the trademarks is applicable here.

Notarization of evidence by way of Statutory Declaration

The Nigerian laws do not permit online notarization and deposition of Affidavits/statutory declaration. This has posed a challenge in these times of the pandemic. Section 90 (f) of the Evidence Act stipulates that an Affidavit must be sworn before the person taking the Affidavit. Thus, online notarization is neither provided for nor recognized in Nigeria. The implication is that foreign brand owners who cannot comply with the requirement of swearing to an oath before an authorized officer in their jurisdiction due to the pandemic, cannot resort to online notarization due to the restriction under Nigerian laws.

Conduct of searches at the Registry

There have also been delays in conducting manual official searches at the Registry, due to social distancing requirements. Under normal circumstances, the official searches are done manually at the Registry and it requires the Trademarks Registry officers to pull out the official files to conduct either the status or availability search in relation to the trademark. The resultant effect is that brand owners cannot have access to relevant information that would have been obtained through these official searches.

Service of Opposition processes

Under the Trademarks Regulations, it is the duty of the Registry to effect service of the Notice of Opposition and Counterstatements on the Applicant’s agent. However, due to the Federal Government’s directive limiting working days and the cadre of officers required to report for duty, the service of these Opposition processes, which is usually effected by lower cadre officers is affected.

Online filing of Opposition processes

Following the Notice issued by the Trademark Registry stating that it will not be extending its time within which to file opposition processes at the Registry, the Registry directed that the parties could file their opposition processes online. A perusal of the online platform of the Registry does not disclose where such opposition processes can be uploaded. All that is required is the practitioner’s obligation to ensure that payment of the official fees is made on or before the due date.

The Way forward

In view of the setbacks highlighted above, there is an imminent need for the Trademarks and Patents Registry to properly digitize all the processes involved in intellectual property registration and renewal. This may not be a mean feat but has proven efficient and possible with the adoption of same by other government agencies like the Nigeria Copyright Commission. Intellectual property Practitioners should be able to undergo the process of registering intellectual property rights online without having to physically approach the Registry to press for the issuance of documents. With regards to trademark search, the Registry should develop an online platform for Applicants and interested parties to conduct searches at ease. It is my recommendation that the Registry should begin the process of gradually uploading trademarks registered in the past till date with the aim of accommodating online searches.

Remote hearing of opposition matters would also be helpful at this time considering the fact that there are a lot of pending matters at the Tribunal. The service of opposition processes could be effected by sending same to the email addresses provided by the Applicants and Opponents either in the trademark acknowledgment form or the Trademark Journals. Additionally, it is recommended that the Registrar should issue a directive allowing for the service of opposition processes through electronic means.

With respect to the requirement to depose to an Affidavit before authorized officers, it will provide a great deal of relief for the Registry to issue a directive allowing a departure from the rules. Thus, brand owners can proceed to undertake online notarization where same is available. This is in view of the fact that an amendment of the Evidence Act is farfetched, and the present situation demands innovative measures to ease the process.

In conclusion, it is hoped that the above stated recommendations will be implemented by the Trademarks, Patent and Designs Registry. Although it is noted that some of the recommendations are for the long term, it is believed that the short term recommendations when implemented would ensure effective and swift delivery of the services provided by the Registry and continuity of the business of the brand owners.

Author: Chidiogo Molokwu (Legal Practitioner) is a lawyer in Nigeria. This article is published as part of NLIPW Trademarks Digest Volume 3 No. 10

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