Regulatory Updates
Federal Ministry of Industry, Trade, and Investment
i. Update from the Nigerian Patents and Designs Registry:
On 2nd December 2024, the Patents and Designs Registry (the Registry) announced the temporary unavailability of the Patent and Designs filing platform due to ongoing data updates. During this period, users were unable to access the platform for any services. According to the Registry, once the updates are completed and the platform is restored, applicants will have the option to request backdating of their applications to reflect their priority dates. The Registry apologised for any inconvenience caused and expressed appreciation for the public's patience and understanding during this period. The updates have been completed and the filing platform is back in service.
ii. The Trademarks Registry (TMR) released two journals on 18 and 25 October 2024.
Interested persons had until 18th and 25th December 2024 respectively, to oppose the registration of any trademark in the journals. The TMR has now received notices of opposition filed by interested persons against some of the advertised trademark applications. The TMR will in the coming weeks publish a list of the opposed trademark applications and proceed to exclude those applications from proceeding to registration pending the outcome of the opposition proceedings. The other trademark applications not opposed will proceed to registration.
WIPO Project Empowers Nigerian Indigenous Fashion and Craft SMES
WIPO Project on IP for SMEs in the Indigenous Fashion and Craft Industries concluded on November 13, 2024, with a vibrant celebration at the United Nations House, Abuja. Launched in July 2024 in collaboration with the Nigerian Copyright Commission, the project trained 22 participants from the Adire, leatherworks, and raffia industries over four months. Using the IP Management Clinics (IPMC) model, participants gained skills to protect and monetize their innovations.
The closing event featured dignitaries, including WIPO Nigeria Office Director Oluwatobiloba Moody and renowned Adire artist Dr. Chief Nike Davies-Okundaye, who shared insights into IP protection and its importance for preserving Nigeria's indigenous crafts. The project highlighted the need for robust IP protection to sustain Nigeria's cultural heritage while empowering SMEs to grow and compete globally.
Standards Organization of Nigeria (SON)
i. SON Empowers Businesses With ISO 10002 Training
The Standards Organisation of Nigeria (SON) recently conducted an ISO 10002 Customer Satisfaction and Complaint Handling training. The program provided practical strategies for transforming customer complaints into opportunities, enhancing satisfaction, and improving organizational reputation. Participants gained tools to strengthen customer relationships and drive continuous improvement. SON's ISO 10002 training is a vital resource for businesses aiming to elevate their customer service and complaint management practices. For details on upcoming sessions, contact SON's Training Services Department.
ii. SON National Conference Advocates Standards in Construction
The Standards Organisation of Nigeria (SON) hosted a National Conference themed "Adherence to Standard Practices – Bedrock of Sustainable Development in the Building Construction Industry."
Stakeholders, led by SON DG Dr. Ifeanyi C. Okeke and Senator John Owan Enoh, emphasized compliance with standards to prevent building collapses and ensure safety and sustainability. The event featured expert presentations, panel discussions, and a communique recommending stricter enforcement of standards, collaboration among regulators, and increased public awareness. SON pledged to promote safety and excellence in Nigeria's construction sector.
The Advertising Regulatory Council of Nigeria ARCON Establishes Image Bank to Boost Local Content Creation
ARCON has taken a decisive step towards establishing the continent's first indigenous stock image bank, named the Nigeria Stock Image Bank (NSIB).1 ARCON inaugurated a 10- member Stock Image Bank Committee tasked with developing and submitting a report to lay the groundwork for implementing the stock image bank.
The report is expected to address key aspects such as technological infrastructure, copyright protection and intellectual property. The committee is chaired by Kelechi Amadi Obi, the President of the Professional Photographers Association of Nigeria, and its members were carefully selected to represent various sectors of the advertising and media industry. Other notable members include Mr. Omo Abunene from the Outdoor Advertising Agencies of Nigeria, Mr. Kanmi Da Silva of the Advertising Agencies Association of Nigeria and Ms. Martha Ugbomma Onyebuchi (ARCON).
Amadi Obi, in his inaugural speech, noted that online search results for quintessentially African images often yield images captured by non-African photographers. While Amadi Obi noted that an image bank is easily established, he emphasized the importance for Africans 'to be their own story tellers', and the hope is that this bank will help develop local content and promote indigenous production. Dr. Olalekan Fadolapo, Director General of ARCON, highlighted the significance of this initiative in promoting local content and helping to boost the economy in line with the country's 'Renewed Hope' agenda.
Legislation and Case Law Updates
WIPO Adopts RIYADH Design Law Treaty
On November 22, 2024, WIPO member states adopted the Riyadh Design Law Treaty, simplifying global design protection and empowering designers.2 Named after Riyadh, where negotiations concluded, the Treaty is WIPO's 28th and second of 2024, following the IP, Genetic Resources, and Traditional Knowledge Treaty.
Key Highlights:
- Simplified Design Protection: Establishes uniform filing requirements, allows multiple designs in one application, and supports e-filing systems.
- Flexibility for Designers: Enables drawings, photos, or videos for applications, allows deferred publication, and includes relief measures for missed deadlines.
- Global Collaboration: Aims to harmonize procedures, making design protection faster and more affordable, especially for MSMEs.
- Protection of Heritage: Integrates traditional cultural expressions and knowledge into design applications.
The Treaty requires 15 ratifications to enter into force and includes technical support for developing countries. Dr. Abdulaziz AlSwailem, CEO of SAIP, called it a milestone for innovation and international cooperation. This Treaty represents a major step in supporting designers worldwide and fostering multilateralism in intellectual property.
Case Law Update
In the Opposition Matter Against Trademark Application No. NG/TM/0/2016/110 509 MELI (and LOGO) in Class 11 in the name of A & C Manufacturing Co. Limited by MIELE & CIE. KG
The dispute in this case centered around the opposition to the registration of the trademark "MELI" by the Applicant, who sought to register the mark in Class 11. The Opponent, the owner of the trademark "MIELE," objected to the registration, claiming that the proposed mark was confusingly similar to their existing and wellestablished trademark. The opposition was heard by the Tribunal, which considered whether the mark "MELI" was likely to cause confusion with "MIELE."
The Opponent argued that the mark "MELI" was visually, phonetically, and conceptually similar to "MIELE," a long-standing registered trademark derived from the founder's name. The Opponent further claimed that the mark "MELI" could mislead consumers and cause confusion in the marketplace due to its resemblance to "MIELE," which had been in use for a significant period.
The Tribunal ruled in favor of the Opponent, holding that the mark "MELI" was indeed confusingly similar to "MIELE" under Section 13(1) of the Trade Marks Act. It found that the marks were likely to deceive or cause confusion among consumers, especially due to their visual and phonetic similarities. The Tribunal applied the principle of "imperfect recollection," noting that consumers and retail personnel with imperfect memory would likely confuse the two marks, thus justifying the prohibition on the registration of "MELI."
The Tribunal also noted that the Applicant failed to discharge the burden of proof in rebutting the Opponent's arguments. As a result, the Tribunal affirmed the Opponent's exclusive right to the "MIELE" trademark and ordered the revocation of the acceptance letter issued to the Applicant for the mark "MELI."
The Tribunal ruled in favor of the Opponent, revoking the acceptance letter issued to the Applicant for the registration of the "MELI" trademark. The registration application for the mark was therefore refused, and the Opponent's rights to the "MIELE" trademark were upheld.
This ruling clarifies and reinforces the protection of established trademarks under Nigerian law, particularly against confusingly similar marks. It emphasizes that trademarks resembling existing ones in visual, phonetic, or conceptual ways can be prohibited under Section 13(1) of the Trade Marks Act. The decision highlights the principle of "imperfect recollection," where consumers may confuse similar marks, and stresses the Applicant's burden to rebut the Opponent's claims. Ultimately, it upholds the exclusive rights of trademark owners, ensuring the protection of well-known brands like "MIELE."
The Opponent was represented by Stren & Blan Partners, instructed by Ipvocate Africa.
Updates From Other Jurisdictions
Sweden Joins the Madrid E-filing System:
The Swedish Patent and Registration Office (PRV) has joined the Madrid efiling system. This update, which has recently been implemented, allows international trade mark registrations based on Swedish marks to be filed and administered through an online portal provided by the World Intellectual Property Organization (WIPO).
The update is a positive change for businesses, as it significantly eases the process of using Sweden as the basic application and provides for quicker and easier access to information. All communication between the applicant, PRV and WIPO can now be made through the portal, including the payment of fees.
Saudi Arabia: SAIP Designated as an International Searching and Examining Authority
The World Intellectual Property Organization (WIPO) recently announced that the Saudi Authority for Intellectual Property (SAIP) will officially assume its role as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) starting December 15, 2024. This designation, approved by the PCT Assembly in July 2023, marks a significant milestone for SAIP and the intellectual property landscape of Saudi Arabia and the region.
Footnotes
1 The Nation (Online, 2024). ARCON establishes image bank to boost local content creation. Accessed 3rd December 2024
2 WIPO (2024). WIPO Member States Adopt Riyadh Design Law Treaty. Accessed 3rd December 2024.
To view the full article click here
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.