Introduction:
Over the past 50 to 60 years, the laws, and regulations applicable to intellectual property rights (IPRs) and intellectual property (IP) practice in Nigeria have witnessed somewhat dramatic growth and transformation whilst striving to stay abreast of global developments and the impact of new technologies. Unfortunately, the practice of IP law in the country is to some extent divergent to the theoretical constructs and the aspirational propositions that underpin the subject as contained in local texts on the subject and as taught to law students in our tertiary institutions. This short essay highlights some of these areas in broad strokes and makes an urgent call for remedial action.
Overview of IP Law in Nigeria
A fundamental aspect to the practice of law in modern times is the quality and relevance of the laws which regulate each area of practice and the extent to which these normative prescriptions are in step with present realities and the needs of the society. In Nigeria, most of the IP laws are outdated and badly in need of a revamp. Apart from the moderate alterations witnessed in the field of copyright law, the other major areas of IP practice remain unchanged since independence. Even in copyright law where changes occurred in 1988, 1992 and 1999 respectively, the current bill seeking to amend the Copyright Act has been making its rounds through the legislative houses since 2015. Some of the new provisions contained in the bill are designed to address secondary liability, provisions relating to the protection of online content, expanding the scope of compulsory licenses in the public interest, introducing factors to be considered before a court can decide on whether the defence of fair use/fair dealing is justified and the ownership of copyright in collective works, among other important additions.
The Trade Marks Act which was promulgated in 1965 and is contained in the 2004 laws of the federation has remained in need of an upgrade for decades. Matters having to do with the protection of new forms of trademarks like shapes, scents, and fragrances, including sounds and service marks are yet to be addressed. Proposed amendments to the Trade Marks Act as contained in the Trade Mark Bill 2016 and the Industrial Property Commission (PCOM) Bill 2018 are still being held in abeyance in the National Assembly. These bills contain provisions on recognition of well-known marks, creation of criminal liability for counterfeiters, circumstances under which the use of marks on the internet may constitute trademark use in Nigeria, exhaustion of trademark rights, priority claims for convention country applications, trademark dilution, geographical indications and the establishment of an Industrial Property Commission.
The Nigerian Patent Act 1970 which also forms part of the 2004 collection of laws is yet to be amended since it was enacted over 50 years ago. The country continues to strut along obliviously as a non-examination jurisdiction despite its avowed objectives of striving towards industrialization. Nigeria desperately hangs-on to its uncomplimentary designation as dumping ground for all manner of patented material of questionable provenance and validity. The proposed IPCOM Bill, among other innovations, contains important provisions for the protection of new plant varieties and plant breeders' rights (predating the newly minted law of May 2021) that are germane to our unique environment.
The local application of international obligations to which Nigeria is signatory are truncated by internal restrictions and conditionalities that renders the country starkly non-compliant with international IP regimes in most cases. In other instances, there are no specific laws regulating subjects like franchising and trade secrets as reliance are generally placed on the imprecise and inadequate prescriptions of the common law in these areas. On the other hand, a number of the relevant provisions contained in the constitution and IP statutes are either inadequate or not properly drafted to address the relevant subject matters.
Nigeria is one of the so-called dualist countries who insist on a two-tier process of reception of international treaties. This has been interpreted to mean that even after due steps have been taken to accede to the provisions of an international agreement via ratification, the Nigerian constitution under section 12(1) seems to require that local laws be amended or modified to incorporate the specific provisions which the country intends to implement domestically before these obligations can have the force of law. This suggests that several important international obligations have been held not to have domestic application because the process of enactment and modification of laws are excruciatingly slow and tedious, sometimes taking many years to accomplish. Some of the important international obligations impacted by this unfortunate situation include the application of provisions relating to the concept of famous and well-known trademarks under the Paris Convention and the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement. Although Nigeria signed on to that agreement as early as 1995 through the ratification of the World Trade Organisation (WTO) Agreement, specific provisions tailored along those lines are yet to be promulgated as part of local laws. As an example, section 44 of the current Trade Marks Act which deals with international arrangements is way too short on substance.
In practice one consequence of this gap in local laws is conflicting decisions rendered by the Trade Marks tribunal on opposition proceedings where the issue of well-known trademarks have been properly raised. In Copyright infringement cases, the authority of foreign copyright owners to sue in Nigeria have been challenged before our courts on related jurisdictional grounds. Section 41 of the current Copyright Act stipulates for additional ministerial action before a foreign copyright owner can bring an infringement lawsuit in Nigeria. That section requires the relevant Minister to publish a list of state parties to international agreements who extend reciprocal protection to works of Nigerian authorship in a government gazette as a condition precedent to similar treatment of foreign authors under Nigerian law.
Due to the slow pace of promulgation and modification of local statutes and other legal instruments, the first and only known instance in which such a gazette was issued under the hand of the Minister was back in 1972 in respect of the Universal Copyright Convention. To cure this embarrassing anomaly, the Copyright Act was amended in 1999 to include a new section 5 giving the responsibility for verifying the countries who are signatories to international conventions to which Nigeria is a party to the Nigerian Copyright Commission. This new section 5 ostensibly creates a unique and separate route to the enforceability of copyrighted works in Nigeria by foreign authors without the need to comply with the strictures of section 41. Because section 41 was still retained by the lawmakers in the current law, some courts appear to have taken the position, per the Microsoft decision, that compliance with its provisions is still a prerequisite regardless of the provisions of section 5 and almost 50 years since the last ministerial order was published.
In the interim, Nigeria continues to engage in bilateral and multilateral agreements affecting IP law with full knowledge and appreciation of these self-imposed restrictions on its ability to comply with its contracted international obligations. It is remarkable that the country is active on the international level espousing the benefits of international relations between states and advocating for international compliance with international IP regimes like the TRIPs agreement while it continues to avoid its freely assumed obligations at international law. Having ratified most of the extant IP treaties discussed or referenced in this paper, Nigeria's conduct constitutes a breach of international law for reasons attributable essentially to internal bureaucratic ineptitude, rather than to any clearly articulated national policy.
IP Law in Practice
In 1999, the Nigerian Constitution was amended to enable rightsholders to sue for the infringement and passing off of trademarks before the federal high courts, where these claims arise from the same set of facts. This was designed to obviate the tedium and expense of filing separate lawsuits at the federal high courts alongside the state high courts involving identical parties and legal claims. However, when the alterations and amendments were effected the word 'passing off' was unwittingly slapped unto an awkward itemisation of the distinct types of IP law instead of adopting the more elastic term 'intellectual property' to capture the established and evolving subject areas.
The direct consequence of these alterations in practice is that although trademark passing off actions not connected to an infringement claim can now be instituted at the federal high court as affirmed in the Supreme Court's decision in Omnia v. Dyktrade there are still reservations on whether the mere insertion of the term 'passing off' is sufficient statutory enactment of a common law cause of action. Furthermore, because the drafters elected the drafting style of listing out particular subject areas of IP law, the attitude of the courts appears to be that the legislative intent was to exclude all areas not specifically itemised. Some of these overlooked areas include franchise arrangements and trade secrets, even where lawsuits premised on these subject areas arise in association with specifically itemised subject matters over which the federal high court (as a specialised court) has been conferred with exclusive jurisdiction. Since federal high courts are regarded as courts of enumerated powers, presumptively founded on federally enacted statutes, it becomes an arduous task to justify an action in all aspects where no federal enactment is available. This regrettable scenario defeats the objective of setting up specialised courts to oversee and adjudicate technical subject areas like IP law.
In 2018, the Nigerian Supreme Court handed down two important decisions on the collective administration of copyrighted works in Nigeria. In identifying five categories of persons who may institute actions for copyright infringement, the Supreme Court took the restricted view that even though all factual indices point to a claimant's conduct as collective management/administration of an amalgam of copyrighted material, once the claimant describes itself as 'owner', 'assignee' or 'exclusive licensee' of the putative works it can avoid the requirement of obtaining regulatory approval as required under section 39 of the Copyright Act. The apex court's position did not seem to make an issue of the fact that the earlier decision in Adeokin Records was premised on the existence of a cause of action that predates the 1999 amendment requiring compliance with section 39, while the cause of action in Compact Disc Technologies arose after the amendment. These two decisions have pulled the proverbial rug from the intention of the legislature to regulate collecting societies as envisaged by the 1999 amendment, necessitating that this legislative objective be re-visited promptly.
Conclusion
Unless specific and deliberate efforts are channelled towards resolving the shortcomings briefly highlighted in this paper, creating a vibrant and strong IPR regime to propel economic growth and development underscored by a creative and innovative workforce that is competitive in international trade will continue to remain a mirage. Continued efforts need to be channelled towards resolving the gaps in our laws through a standing IP law reform commission that would review our IP laws every 5years with a view to optimising them. Continuous legal education of our judges organised by the Nigerian Copyright Commission (NCC), the Intellectual Property Commission (if and when established) and stakeholder IP organisations, should be organised frequently to bridge the steep learning curve that afflicts the Federal High Court Bench. In appointing judges to the Federal High Courts, preference should be accorded to IP practitioners, lecturers, and scholars who are conversant with the subject.
The process of accession to and implementation of international treaties should be a deliberately articulated objectification of Nigeria's foreign policy goals, rather than the disorganised knee-jerk reaction that bedevils the current practice. The decision on whether and the extent to which the country is willing to be bound by international arrangements should be made far ahead of such commitments, with the participation of specialists in the affected areas. This will ensure that all necessary legal steps are taken to comply with local requirements and the Constitution (inclusive of the promulgation of relevant laws) before the process of ratification is undertaken.
Originally published by CLRNN - Commercial Law Research Network Nigeria 8 July 2021.
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