New Year greetings from Aluko & Oyebode (A&O) as we bring you our bi-monthly and first newsletter for the year 2013. Last year was a busy one for us; we were fully engaged in serving our clients, writing articles, delivering papers at conferences, and improving our staff through regular training. We also increased our staff strength to adequately manage our large clientele base which continues to grow.
In this newsletter, we have addressed some of the issues we assisted our clients in resolving during the course of last year, ranging from preventing the counterfeiting of their products to the protection of unregistered well-known marks, reviewing TSAs for NOTAP registration, and crossing regulatory hurdles with product registration at both NAFDAC and SON.
Our last news letter addressed the issue of combating counterfeiting via regulatory agencies. Seeing that an increasing number of our clients are battling with issues of counterfeiting, we further addressed the issue in this edition.
Finally, we have provided you with information on some of our activities as a firm.
As we begin the year 2013, we remain committed to providing excellent services to our existing as well as prospective clients.
ADDRESSING COUNTERFEITING ISSUES OF NIGERIAN INVESTORS – Building an enforceable case
In recent times, Nigeria has witnessed a lot of foreign investment. Several brands such as Kentucky Fried Chicken, Domino’s Pizza, Zara, Nike, etc. have all set up businesses in Nigeria. With a population of over 160 million people, Nigeria has a very large consumer base.
In the last couple of months, the growth in foreign direct investment in Nigeria has been making news in the country. For instance, the Minister of Trade and Investment recently reported that Japan may soon invest an estimated sum of about N1.58 trillion ($10 billion) in Nigeria. Similarly, there are reports that the Chinese accumulated investment in Nigeria is expected to exceed US$10 billion by the end of December 2012 and the European Union countries plan to strengthen investment ties with Nigeria.
With all these plans, counterfeiting, piracy, product registration, and consumer protection issues would naturally be a major concern for the investors. This paper seeks to address how investors investing in Nigeria can protect their brands by building a successful and enforceable counterfeit case.
The first port of call is always to identify the counterfeit products, understand the counterfeiters’ network and the scope of their activities. To do this, brand owners need to:
- Register their products with the relevant regulatory agency;
- Strategize on effective methods for monitoring the activities of the counterfeiters;
- Work with IP practitioners, investigators, law enforcement officers, the Customs and other relevant regulatory agencies to establish their case;
- Effectively manage the evidence received;
- Provide a secured warehouse; and
- File a formal petition to the regulators to prosecute the counterfeiters.
It is generally advisable to work with experienced IP practitioners. This is because IP practitioners in the course of their work usually develop a good relationship with the regulators and law enforcement officers. They are better placed to manage/oversee the process because they know the nature of the evidence required to establish a case and would tailor the process towards achieving this.
IP practitioners are also better placed to micro-manage private investigators (usually termed “business support”) by ensuring that they conduct their activities within the ambits of the law and that they avoid abusive investigative behaviours which may tarnish the image of the brand or impose any form of liability on the brand owners.
All the recommendations above would aid investors in protecting their brands from counterfeiting in Nigeria and in growing their businesses. It goes without saying that counterfeiting has become a major problem globally and as such, the importance of brand protection cannot be over emphasized. Each jurisdiction is unique and understanding the jurisdiction involved would assist brand owners in adopting an appropriate approach when building a successful case against counterfeiters.
PROTECTION OF WELL-KNOWN TRADEMARKS IN NIGERIA
Nigeria is a party to the Paris Convention for the Protection of Industrial Property (“the Paris Convention”) which provides for the protection of well-known marks. However, the treaty has not been fully adopted into law in Nigeria as required by the Treaty and the Nigerian Constitution. Although Nigeria does not maintain a special register of well-known marks like some other jurisdictions, however, it is the practice of the Registry to give recognition to certain well-known marks which have achieved worldwide recognition by consumers. Nigeria is a first-to-file jurisdiction therefore, non-registration of a mark under Nigerian law leaves the mark unprotected.
ANTI-COUNTERFEITING COLLABORATION OF NIGERIA (ACC) & THE INTERNATIONAL TRADEMARK ASSOCIATION (INTA) ORGANIZED POLICY ROUNDTABLE
The Anti-Counterfeiting Collaboration of Nigeria (ACC) & The International Trademark Association (INTA) organized a policy Roundtable on “Taking the Legislators to the Counterfeiter’s Doorstep: A Case Study of the IPCOM Bill and the Counterfeit Goods Bill” on 15th November 2012. This event was sponsored by several brand owners such as The Coca-Cola Company, Pfizer Nigeria, East Africa Region (Pfizer NEAR), Guinness Nigeria, GlaxoSmithKline, Biofem, Sproxil as well as INTA. IP practitioners were not left out, as a good number of them also sponsored the event. This Roundtable was very informative; it provided key IP practitioners a forum to discuss with the legislators, regulators, members of the judiciary and brand owners on the key issues hampering the bills from being passed into law and the issues of counterfeiting in Nigeria. There was also a presentation of awards to the winners of the ACC/ US Consulate Anti-Malaria Student Poster Design Competition.
At the end of the Roundtable a communiqué was drafted and a committee comprising of brand owners, regulators, the United States consulate, INTA, the media and intellectual property lawyers was designated to follow up with the legislators to ensure that the IPCOM Bill and the Counterfeit Goods Bill are passed into law. This committee currently meets regularly towards achieving this goal.
RELOCATION OF THE TRADEMARKS, PATENTS AND DESIGNS REGISTRY
The Trademarks, Patents and Designs Registry recently moved office to a new location. The Registry’s new address is Block ‘H’ Old Federal Secretariat, Area 1 Garki, Abuja.
As a result of this relocation there was a disruption of normal office work at the Registry from 10th to 21st of December 2012.
NAFDAC ATTENDS PUBLIC HEARING ON THE COUNTERFEIT GOODS BILL
Officers of NAFDAC attended a public hearing of the the Counterfeit Goods Bill held on 15th November 2012. This bill provides for stricter punishments like life imprisonment for the counterfeiting of drugs.
FIRM NEWS
A&O Partners delivers paper at the ACC & INTA policy Roundtable
Ms. Uche Nwokocha, a Partner & Head of the Intellectual Property department at A & O, delivered a paper titled: “Anti-Counterfeiting as an Alternative Relief to a Brand Owner: A Case for ACTA” at The Anti-Counterfeiting Collaboration of Nigeria (ACC) & The International Trademark Association (INTA) organized policy Roundtable. A copy of the presentation can be found on the ACC website here.
Mr. Mark Mordi, a Partner of the dispute resolution department at A & O, also delivered a paper titled: “The Role of the Legal Practitioner in the fight against Counterfeiting and Piracy” at the ACC & INTA policy Roundtable. A copy of this presentation is also available on the ACC website.
A & O holds a retreat on “Managing Growth in a Professional Services Firm”
The law firm of Aluko & Oyebode held its annual retreat on 30th November and 1st December 2012 titled “Managing Growth in a Professional Services Firm”. Over the past 19 years the Firm has grown to become the largest law firm in West Africa with offices in Lagos, Abuja and Port-Harcourt with over 12 partners, 55 Senior Associates/Associates and a full complement of highly qualified support staff.
Firm Articles
Ms Uche Nwokocha, wrote an article on Nigerian Intellectual Property- Overview of Developments & Practice, published by Nigerian Institute of Advanced Legal Studies (NIALS) in its 2012 Journal of Intellectual Property [NJIP]. A copy of this journal can be obtained from NIALS at the University of Lagos, Akoka, Lagos, Nigeria.
