[Part 2: "International Intellectual Property Rights Protection Mechanisms"]
In Part 1 ["Quick Overview of Intellectual Property Rights in Nigeria"] we looked at the basic Intellectual Property Rights that a Nigerian Information and Communication Technology firm should be concerned about. Now we shall look at the International Intellectual Property Rights protection mechanisms that would help the Nigerian firm secure its Intellectual Property Rights across the borders of Nigeria.
Part 1 ["Quick Overview of Intellectual Property Rights in Nigeria"] specifically covered:
- Brief introduction (what is Intellectual Property Rights anyway?)
- Types of Intellectual Property Rights (Copyrights, Trademark, Patents and Designs).
- The relationship between Intellectual Property Rights and Information and Communication Technology products.
In this part we shall consider:
- The territoriality of Intellectual Property Rights and the rationale for international protection
- The different International Intellectual Property Rights systems and Organizations.
- Emerging areas of International Intellectual Property Rights protection (domain name protection etc)
- Summary of how and why every Nigerian Information and Communication Technology firm should key into international Intellectual Property Rights protection.
- Territoriality and International Protection of Intellectual Property Rights:
Another reason that makes Intellectual Property Rights protection important for Information and Communication Technology products is: globalization and the virtual disappearance of national borders in the world of business and commerce. Information and Communication Technology being one of the greatest motivator of global trade is unfortunately extremely susceptible to Intellectual Property Rights theft arising from cross-border trading of goods and services.
The problem arises because Intellectual Property Rights protection is offered by nations and is valid only within that nation's territory. This means that for an Intellectual Property Right to be accorded protection in other countries; it will require complying with the laws and requirement of each such country. With globalization and the rapid way products can speed around the world due principally to Information and Communication Technology, a firm seeking to break into new markets is faced with the expenses and rigour of protecting its Intellectual Property Rights in each of the countries they intend to market their product.
A simple answer would have been to market goods in other countries irrespective of the action of counterfeiters or competitors in that country. But alas, the protection offered to Intellectual Property Rights in nations also includes the right to prevent importing or dealing with those goods in the stated country. This means that a competitor in a foreign country can freeze out the legitimate owner of the Intellectual Property Right from trading his goods in the competitor's country by merely registering the Intellectual Property Rights. Since Intellectual Property Rights is generally granted to the first to register, the legitimate owner in such a case would be precluded from dealing in the competitor's country.
A simplistic illustration: I could decide upon hearing that Apple has launched its new line of phones called "I-Phone 8" to approach the Nigerian Trademark registry and register a trademark called "I-Fone 8". This would technically mean that I can prevent all authorized Apple dealers from importing or selling the new "I-Phone 8" as it would infringe on my trademark "I-Fone 8". This is called "trolling" and is of course reprehensible! In reality though, Apple could defeat this claim by relying on the principles of "well-known" mark or appointing a competent Trademark watch service to spot and oppose such Trademark applications.
However it is safer to avoid the uncertainty of litigations and interlocutory restraining orders that could effectively freeze out the product for the relevant time frame before the Courts Judgment.
To avoid such ugly scenario's the comity of nations have come together to create systems that facilitate international "registration" of Intellectual Property Rights.
- International Intellectual Property Rights Systems:
The first thing to be noted when the term "International Intellectual Property Rights system" is used is that; registration or grant of Intellectual Property Rights protection and its enforcement always remains with individual nations. The so called "International Intellectual Property Rights" merely refers to agreements between nations to subscribe to a uniform set of requirements that would lead to those several nations considering an application to grant protection, but actual grant would still be considered and given by the nation or in some cases bloc of nations subject to their own standards.
Secondly, we must note also that this International Systems are not automatically applicable to every country. Only countries that have signed up to the Treaty governing that system are covered.
Several International Intellectual Property Rights systems exist that provide uniform international protection structures, they include:
- Berne Convention (1886): This is the oldest International Law governing Copyright, it was ratified in 1886 but its latest version was adopted in Paris in 1971. It provides a minimum standard for protection of Copyright and establishes a system where no formal registration is required for Copyright protection. It uses the "Principle of National Treatment" where countries are required to recognize the Copyright of foreigners without any further formalities. This is the closest system to true "International Intellectual Property Rights protection".
- TRIPS Agreement: This is the Agreement on Trade Related Aspects of Intellectual Property Rights. It is administered by the World Trade Organization. It re-establishes the Berne Convention and further extends Copyright to cover such new areas as Computer Programs and electronic databases.
- WIPO Copyright Treaty (WCT): This Treaty addresses the protection of Copyright in the face of technological innovations, particularly the internet. It broadens the application of the Berne Convention to cover broadcasting over the internet. Hence under the WCT the storage of a work in digital form in an electronic medium e.g. on a computer memory would constitute a reproduction of that work. It is administered by the World Intellectual Property Organization (WIPO).
- Madrid System: The
Madrid system comprises two International Laws called the Madrid
Agreement concerning the International Registration of Marks (1891)
and the Madrid Protocol relating to the Madrid Agreement (1989).
The two working together create a unique system that allows an
applicant to file one application and pay one set of fees to the
World Intellectual Property Organization (WIPO) International
Bureau. The WIPO Bureau then passes on the application to such
number of nations as the applicant specifies (called
"designation"). The countries are then at liberty;
subject t0 the application of their normal standards to grant
protection or refuse same.
However, to get an International Registration under the Madrid system, the applicant must have a valid Trademark registration in his home country. The Madrid system is only available for citizens or organizations belonging to a member state of the system.
Currently the Madrid System has over 90 members, these includes individual countries and some regional blocs that sign on as a single entity. Notably, Nigeria is not a member of this Union.
- Paris Convention and TRIPS Agreement: These two International Laws importantly provide protection for "well-known" Marks. They protect such well known marks from infringers who ordinarily wish to unfairly ride on the popularity of a well-known Mark. Hence Apple would be protected against my sham registration of "I-Fone 8" in the example presented in section 6 above.
- Madrid System: The Madrid system comprises two International Laws called the Madrid Agreement concerning the International Registration of Marks (1891) and the Madrid Protocol relating to the Madrid Agreement (1989). The two working together create a unique system that allows an applicant to file one application and pay one set of fees to the World Intellectual Property Organization (WIPO) International Bureau. The WIPO Bureau then passes on the application to such number of nations as the applicant specifies (called "designation"). The countries are then at liberty; subject t0 the application of their normal standards to grant protection or refuse same.
- Patent Cooperation Treaty
(PCT) 1970: The principle of territoriality is
particularly complex with regards to Patents because; the
principles and procedure for grant of Patents differs more sharply
between nations than any other aspect of Intellectual Property
To address these challenges, the Patent Cooperation Treaty was introduced. It provides a simplified procedure where filing of a Patent application is done to the International Bureau of WIPO the application then undergoes several procedures and thereafter the applicant can apply to and obtain protection in many different nations. They usually would be a first application in the applicant's home country, but the first application can go directly to the WIPO Bureau.
One unique advantage of the PCT is that it enables the applicant to obtain an International filing date, which is retained in the application the applicant files in every other designated nation. This date where there is a dispute over which Patent is earlier in time would be used to adjudge the time of the applicants filing. The applicant also gets the luxury of the 18 months processing time afforded under the PCT system to properly assess its Patenting decisions.
- Patent Cooperation Treaty (PCT) 1970: The principle of territoriality is particularly complex with regards to Patents because; the principles and procedure for grant of Patents differs more sharply between nations than any other aspect of Intellectual Property Rights.
- Hague System: Just like the Madrid system, it facilities the grant of an Industrial Design right in several nations through the filing of one application and payment of one set of fees usually to the WIPO Bureau. Unlike the Madrid system, they is no requirement for a first application in the applicants home country.
- International Intellectual Property Rights Organizations:
In the section, we will examine some of the important organizations in the management of international Intellectual Property Rights relative to a Nigerian Information and Communication Technology firm. They include:
- World Intellectual Property Organization (WIPO):
The World Intellectual Property Organization was established by the WIPO Convention 1967. It is a self-funding agency of the United Nations based in Geneva, Switzerland. It has 188 members.
Amongst other duties, WIPO administers several of the International Intellectual Property Rights systems and also provides over all coordination and direction for global Intellectual Property Rights issues. WIPO also administers the very important Uniform Domain Name Dispute Resolution Policy (UDRP) at its Arbitration and Mediation Centre.
- African Intellectual Property Organization (OAPI).
OAPI was created originally in 1962; it is regulated by the Bangui Agreement. It currently has 16 member states made up of several Francophone African countries around the West and Central African axis. It is headquartered in Yaounde, Cameroon.
The OAPI is a regional Intellectual Property Rights bloc. Essentially the member states have bound themselves together under OAPI in respect of Intellectual Property Rights issues. Meaning that they are treated as one country for the purpose of protection and enforcement of Intellectual Property Rights.
In essence, protection granted by OAPI is valid in all 16 member countries without more. Nigeria is not a member of this Organization.
- African Regional Industrial Property Organization (ARIPO)
ARIPO like the OAPI, it is a regional Intellectual Property Rights bloc. It was established in 1976 by the Lusaka Agreement. It is based in Harare, Zimbabwe and it has 18 member states made of several Anglophone African countries. However, Nigerian and South Africa two major Anglophone economic powers do not belong to the Organization.
However unlike OAPI, ARIPO has not yet fully harmonized its member states to be able to grant unitary Intellectual Property Rights of every type that are valid across all the member states.
- Emerging Areas of Intellectual Property Rights Protection
One area where the International system responded very fast to Intellectual Property Rights infringement issues is in the area of domain name abuse. This includes such practices as "cyber-squatting" (where the Trademark of a popular organization is registered as a domain name without the organizations consent. (e.g. a Nigerian deciding to register "www.cnn.ng"). Another veritable abuse is "typo-squatting" where the trademark is used with a slight misspelling that nonetheless is capable of deceiving the public to link the domain with the owner of the popular trademark (e.g. www.googie.com).
Domain name abuse is especially a threat to technology based businesses e.g. website dependent businesses. This is because when such frauds confuse the public with a domain name, the legitimate owner of the trademark would lose patronage to the imposter and also suffer the back lash of a bad reputation when the imposter fails to deliver to the deceived customer's expectations.
The Internet Corporation for Assigned Names and Numbers (ICANN) the managers of the domain name system realized this danger and in league with WIPO developed the Uniform Domain Name Dispute Resolution Policy (UDRP) which is administered by WIPO's Arbitration and Mediation Centre (AMC).
The UDRP is an expedited dispute resolution platform that allows owners of Trademarks to principally obtain a mandatory transfer of any domain name that infringes their trademark, was registered in bad faith and in which the infringer has no legitimate right or interest. It is an efficient system that usually concludes proceedings within 2 to 3 months. The WIPO AMC has conducted over 30,000 domain dispute resolution proceedings to date.
- Imperative of Intellectual Property Rights protection:
It is thus against the above back drop that it is recommend that Nigerian Information and Communication Technology firms must take a hard look at their Intellectual Property Rights protection strategy if they seek to export their products.
As the proceedings between Konga and Jumia set out below shows, the Nigerian Information and Communication Technology firm is disadvantaged in a cyberworld when it is either oblivious or neglects to address Intellectual Property Rights issues appropriately.
The unfortunate Domain Name dispute between the Nigerian e-commerce giants, Konga and Jumia was decided by the WIPO AMC on 4th September 2014. (Case No. DSC2014-0001; Konga Online Shopping Limited v. Rocket Internet GmbH, Arnt Jeschke).
The background facts were that the proprietors of Jumia (Ecart Internet Services Nigeria Limited) a German controlled company approached the proprietor of Konga (a prodigious Nigerian Information and Communication Technology startup) seeking to forge a partnership which the latter turned down after some consideration. The proprietors of Jumia pressed some more but Konga refused to budge.
Unknown to the proprietors of Konga however, the proprietors of Jumia decided to get a bargaining chip; they went ahead and registered several domain names corresponding exactly to the name Konga which Konga had applied to register as a Trademark at the Nigerian Trademark registry. Jumia's strategy was to register the domain as country code Top-Level Domains (ccTLD) of several African countries such as that for Seychelles which sparked the case at hand (www.konga.sc). This could subtly mean that if Konga attempts to export its services and expand operation to any of these neighbouring countries, it would not be able to use those choice ccTLD.
Unfortunately however, Konga lost the proceedings for the reason that its Trademark application on the basis of which it brought the proceedings had not been fully registered even though it had a pending application at the Registry.
Of course Konga may have had a favourable outcome if they awaited full registration of their Trademark before taking out the proceedings or alternatively, they would have supplied evidence of adequate popularity of their unregistered Trademark under so-called "common law" rights.
What is however clear is that; a failure in Intellectual Property Rights protection strategy may have robbed or significantly reduced the chances of exporting the successful products of this Nigerian Information and Communication Technology firm.
Fortunately however, the UDRP allows a party like Konga that lost on such unfortunate grounds to reorganize its case and make another attempt. However, this is subject to very stringent conditions.
Needless to say, Nigerian Information and Communication Technology firms must learn from this scenario and deploy robust Intellectual Property Rights protection mechanisms as they prepare to or are inevitably forced to cross the borders. A coherent Intellectual Property Rights strategy must be formulated, implemented, monitored and funded just like marketing, operations or any other arm of the business.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.