Analyzing the Impact of the Business Facilitation (Miscellaneous Provisions) Act on the Intellectual Property Industry: A Thorough Evaluation

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 KELSON EMMANUEL 1

Kelson Emmanuel[1]

  1. Introduction

On February 10th, 2023, the former President of Nigeria, Muhammadu Buhari, signed the Business Facilitation Bill 2022, thereby enacting the Business Facilitation (Miscellaneous Provisions) Act, 2022 (the “BFA”). The BFA, introduced by the Presidential Enabling Business Environment Council (PEBEC), seeks to remove bureaucratic barriers to doing business in Nigeria by amending 21 business-related laws. The BFA aims to promote the ease of doing business in Nigeria, eliminate bureaucratic bottlenecks, and amend relevant legislation to promote the ease of doing business while institutionalizing all the reforms for easy implementation.[2]

This article will examine the changes brought about by the BFA and their implications for the intellectual property industry starting with the general provisions and moving to the amendments relevant to the intellectual property industry.

  1. General Provisions

The BFA requires all Ministries, Departments, and Agencies (MDAs) of the Federal Government that offer products and services to the public to adhere to transparency requirements. This includes publishing a comprehensive list of requirements, along with timelines for obtaining the products and services.[3] MDAs are expected to publish this information within 21 days of commencement of the BFA.[4] The publication must be prominently displayed on the MDA’s website and also made available at their customer help desks or offices.[5] In addition, if an MDA fails to respond to an application within the stipulated time, the application is deemed approved.[6] Once an application is deemed approved, the applicant may request the MDA to issue a certificate or document confirming the approval and the MDA must issue this certificate or document within 14 days of the request from the applicant.[7] The notification requesting the certificate or document is considered equivalent to the actual certificate or document confirming the approval.[8]

The BFA includes another significant provision, known as the “one government directive”. It refers to the collaboration among MDAs to process and deliver products and services to the public.[9] Essentially, when an individual or organization requests a specific service from an MDA that necessitates verification or certification from other relevant MDAs, the responsible MDA will conduct the required verification or certification from those other MDAs.[10] This promotes synergy and cooperation among MDAs, leading to efficiency and promptness in services delivery.

The provisions of the BFA are anticipated to have far-reaching implications for the intellectual property industry. By prioritizing efficiency and promptness in service delivery, these provisions ultimately seek to facilitate a more business-friendly environment in Nigeria. To delve deeper into the effects of these provisions, an analysis of their impact on the Intellectual Property Industry will be conducted, using the trademarks sector as a case study.

  1. The Trademarks Sector[11]

The registration process for trademarks in Nigeria can be roughly summarized as follows:

  1. Request for preliminary advice on distinctiveness.
  2. Application for search to determine if the proposed trademark is identical or similar to a registered trademark.
  3. Application for trademark registration.
  4. Publication of the trademark in the Trade Marks Journal.
  5. Registration and issuance of a certificate of trademark registration if there is no opposition or if an opposition was not upheld.[12]

Throughout the registration process, the registry is expected to provide the applicant with various documents or notifications, including the registrar’s preliminary advice on distinctiveness, acknowledgement and acceptance letters, notification of publication in the journal, and the certificate of registration. The duration of the entire process, from requesting preliminary advice to receiving the certificate of registration, is often lengthy and can range from 12 to 18 months or more.[13] Additionally, the lack of transparency in the process is evident in the absence of specific timeframes for actions such as publication of the mark in the Trademarks Journal after the issuance of acknowledgement and acceptance letters. Furthermore, there is no defined period for issuing a registration certificate even if the mark remains unopposed after the mandated 2 months. To remedy this, the BFA mandates the Trade Marks Registry, as an MDA, to publish the specified timeframes for the services it provides.[14] It is recommended that the publication encompass timelines for:

  1. The issuance of preliminary advice on distinctiveness.
  2. The issuance of search reports.
  3. The issuance of acknowledgement and acceptance letters.
  4. The publication of a trademark in the journal.
  5. The issuance of certificate of trademark registration if there was no opposition.
  6. The issuance of certificate of trademark registration if an opposition was not upheld.[15]

If the Registry fails to issue a certificate of registration within the published timeline, the certificate will be deemed issued under the provisions of the BFA.[16] The applicant simply needs to send a notification[17] the Registry and request the issuance of a certificate or any other document that confirms the registration.[18] This notification serves as a certificate of trademark registration for all practical purposes.[19] The objective of this provision is to encourage the Registry, along with other government agencies, to provide services promptly.

In encouraging expediency in providing services, care must be exercised to avoid excessively broadening the scope of deemed approval or grant. For instance, if a trademark was not advertised within the specified timeframe, it should not be automatically considered as published. This approach would undermine the purpose of advertising, which is to allow trademark owners with similar marks to oppose the published mark, potentially leading to prolonged legal disputes and ultimately defeat the ease of doing business objective of the BFA. Therefore, in such situations, the appropriate course of action may be to take disciplinary measures against the responsible officer.[20] The prospect of disciplinary action will serve as an incentive for the relevant officer to perform his duties expediently. Additionally, the registry should have the authority to retroactively review and strike out inadequate applications that have been deemed approved, preventing such applications from slipping through the system.[21]

Regarding the ‘one government directive’ mentioned earlier, its implementation in the Trademarks sector will necessitate cooperation between the Trade Mark Registry and other relevant MDAs, particularly the Corporate Affairs Commission (CAC). The CAC is responsible for managing business names and removing names from the register.[22] According to Section 852(1)(d) of the Companies and Allied Matters Act, 2020 (CAMA), it is prohibited to register a company, business name etc., with a name or trademark that conflicts with an existing trademark, unless the owner of the trademark gives consent. Similarly, under Section 11 of the Trade Marks Act, a trademark cannot be registered if its use would cause confusion or deception in the course of trade. This expands the grounds for refusal of registration of a trademark beyond conflicts with existing trademarks to include all cases where the use of the trademark would cause confusion or deception. Consequently, a trademark that closely resembles the registered name of an incorporated company should be denied registration because it would cause confusion or deception, as end users would likely assume that the company and the trademark proprietor are the same entity.

To achieve these objectives, it is crucial for both the CAC and the Trade Marks Registry to collaborate effectively. This emphasizes the significance of the one government directive. Thus, under the directive, the CAC and Trade Marks Registry should work together to ensure that a proposed trademark or company name does not conflict with the registered name of a company or a registered trademark, as the case may be. It is worth noting that initially, there appears to be a conflict between the provision in Section 5 of the BFA and Section 853 of CAMA. Section 853 of CAMA grants the CAC the authority to establish regulations that mandate applicants seeking approval under Section 852 to obtain the opinion of a relevant MDA. This contradicts the government directive that places the responsibility on the CAC to seek the view of the relevant MDA regarding applications before the CAC for approval. However, any perceived conflict is resolved by Regulation 46 of the Companies Regulation 2021. This regulation assigns the aforementioned responsibility to the CAC, thus aligning with the one government directive of the BFA.

  1. Amendment of the Trade Marks Act.
    • Definition of Goods

The definition of goods in the Trade Marks Act (the “TMA”) was amended to include services.[23] This change has significant legal implications, as it officially recognized service marks[24] in Nigeria and resolved any uncertainties regarding the legality of registering such marks in the country. Prior to this amendment, the Nigerian trademarks regime did not acknowledge service marks, which meant that only trademark owners involved in the trade of goods could legally register their marks.[25] To address this issue, the Minister of Industry, Trade and Investment (the “Minister”), pursuant to the provisions of section 45(1)(b) of the TMA,[26] expanded the classification of goods, for the purpose of trademark registration, to encompass services as well. However, this move has faced substantial criticism for potentially exceeding the Minister’s authority. According to section 45(1)(b) of the TMA, the Minister is only empowered to make regulations solely concerning the classification of goods. Consequently, including services in the classifications was considered contrary to the law since services were not previously recognized as goods.

In any case, one may wonder whether the amendment only serves as a basis for any future regulation and registration of service marks or whether it both ratifies the previous regulation and registration of service marks and also serves as a basis for future ones. This is because statutes apply prospectively and not retrospectively except it is explicitly stated to apply retrospectively or it applies to purely procedural matters.[27] Since none of these exceptions are applicable, it is safe to assume that the amendment only serves as a basis for future regulations and registrations. Consequently, a question arises as to whether previous registrations are nullified and rendered invalid since they were made pursuant to an ultra vires regulation. To address this concern, it is recommended that the Minister issue a directive clarifying the legal status of previous registrations subject to judicial review. Also, the Minister, in line with the newly amended section of the TMA, should provide an updated classification that aligns with the current Nice International Classification of Good and Services of the Nice Agreement of 1957.[28] This alignment is essential to ensure that Nigeria keeps pace with global standards. Finally, it is essential to periodically review the classification and issue new ones accordingly.

  • Definition of Trademark

The definition of trademark was amended by section 69(b) of the BFA as follows:

(b) substituting for the definition of the words trade mark, a new definition of “trade mark” —

“trade mark” means —

(a) a mark used or proposed to be used in relation to goods or services 

for the purpose of indicating a connection between the goods or services 

and a person having the right, either as a proprietor or as a registered user, to use the mark, whether with or without any indication of the identity of that person, and may include shape of goods, their packaging 

and combination of colours; and

(b) in relation to a certification trade mark, a mark registered or deemed to have been registered under section 43 of this Act.

By this amendment, the BFA broadened the scope of trademarks to now include the shape of goods, their packaging, combinations of colours, and marks used in relation to services.[29] Additionally, it removed the necessity for the trademark to be used in the course of trade,[30] allowing for the registration of trademarks used in non-commercial activities. Consequently, organizations providing goods and services for non-profit purposes now have the opportunity to register their trademarks. However, the use of the word ‘may’ in relation to recognizing the shape of goods, their packaging, and combinations of colours as trademarks can potentially cause confusion because of the ambiguous nature of the word. This ambiguity arises from the fact that, in legal terms, ‘may’ can either indicate a mandatory or discretionary requirement. Consequently, if the interpretation leans towards a mandatory requirement, there is no issue. However, if it is discretionary, are there certain conditions that need to be met before the shape of goods, their packaging, and combinations of colours could be recognized as trademarks? Nonetheless, regardless of the interpretation, the amendment is undoubtedly a positive development.

However, one may be curious as to the rationale behind the recognition of the shape of goods, their packaging, and the combination of colours as trademarks, considering that they can already be registered as industrial designs.[31] One possible explanation becomes apparent when we examine the lifespan of an industrial design. An industrial design remains protected for a cumulative period of 15 years, which includes 5 years after registration and the option to renew for 2 additional 5-year periods.[32] After this duration, the design enters the public domain, making it available for anyone to use. However, trademarks have the potential to last indefinitely, provided they are periodically renewed.[33] Consequently, the limited lifespan of an industrial design can be circumvented by registering it as a trademark. This approach also provides a way to sidestep the requirement of non-functionality that applies to industrial designs.

According to section 12 of the Patents and Designs Act, a design must not be solely functional in order to be eligible for registration; it must possess aesthetic qualities.[34] Accordingly, shapes and packaging (design) that are solely functional can be registered as trademarks. It is not clear if this was the intention of the draftsman, given that functionality is protected by patents. Moreover, this approach goes against the Functionality Doctrine in trademark law. The Functionality Doctrine holds that a trademark necessary to obtain a technical result should not be accepted for registration.[35] In other words, if a proposed trademark performs a function for the product to which it applies, it should be disqualified from registration. The rationale behind this doctrine is to prevent companies from impeding fair competition by allowing them control a useful product feature without going through the patent process.[36] Essentially, functionality should be protected by patents subject to the eligibility requirements for patent registration, and trademarks should be limited to identifying the source of the product. However, when examining the TMA, it becomes apparent that non-functionality is not a requirement for trademark registration in Nigeria. The fundamental criteria for registration include the mark being distinctive or having the potential to become distinctive, while also not falling within the category of marks that are ineligible for registration.[37] Therefore, the shape and packaging of a product that are purely functional can rightfully be registered as trademarks in Nigeria. However, it is important to note that at the time the TMA was enacted, only marks could be registered. According to section 67 of the TMA, a mark “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof,” elements that cannot perform a function for a product, hence the need to specify non-functionality as a requirement for trademark registration was unnecessary. However, with the recognition of shape and packaging of goods as trademarks, elements that can perform a function for a product, it is now crucial to explicitly provide for non-functionality as a requirement for trademark registration.[38]

Furthermore, the amendment opens up the possibility of registering colours as trademarks. Previously, under the TMA, it was not permissible to register a colour or colours alone as trademarks. The colour or colours had to be claimed or registered along with a word or device.[39] However, with this amendment, it becomes possible to register colours on their own as trademarks. It is important to note the use of the term “combination of colours,” which means that a single colour cannot be registered as a trademark; it must be a combination of colours. This requirement serves to enhance the distinctiveness standard set by the TMA. Thus, the registration of colours as a trademark can occur in two ways: either a single colour with a word or device, or a combination of colours with or without a word or device.

  1. Amendment of the Patent and Designs Act

The First Schedule to the Patents and Designs Act outlines two categories of compulsory licenses for patents. The first category can be granted, subject to specific conditions, either after four years from the patent application filing or three years from the patent grant, whichever expires last.[40] The second category can be granted in certain cases[41] before the prescribed period ends, pursuant to a Ministerial order in the Federal Gazette.[42] However, the Schedule does not address the procedures for application, grant, use, and withdrawal for the second category of compulsory licenses. This issue has been resolved by section 62 of the BFA, which introduces a new paragraph stating that the Minister shall establish regulations to govern the process of applying for, granting, using, and withdrawing compulsory licenses under the second category.

  1. The Progress Thus Far.

One might ponder about the level of implementation achieved thus far regarding the provisions of the BFA. The BFA necessitated compliance within 21 days of its commencement, which occurred on 8th February 2023.[43] It is apparent, upon a quick examination of the Trade marks, Patents and Designs Registries’ websites, that these provisions are still awaiting implementation. This situation raises concerns about whether there should be a regulator for the MDAs to drive implementation. It has been proposed that PEBEC should be responsible for ensuring the implementation and enforcement of the provisions of the BFA by the relevant MDA.[44] Alternatively, a suggestion has been made to establish a new agency specifically tasked with overseeing the implementation and enforcement of the provisions of the BFA by the relevant MDA.[45] This agency should possess the authority to issue administrative rulings, while allowing for judicial review.[46] These suggestions are all encouraging, as the essential objective of the BFA risks being compromised without swift implementation. One thing is certain, implementation of these provisions will improve the Nigerian business environment and foster ease of doing business.

  1. Conclusion & Recommendations

The introduction of the BFA is a positive development, as it aims to enhance Nigeria’s business environment and attract more investors.[47] However, the crucial aspect lies in effectively implementing the provisions of the BFA. It is important to ensure that all MDAs comply with the provisions of the BFA. The business community also has a responsibility to test the BFA and ensure that it is not merely a symbolic document.

This article offers specific suggestions for implementing the BFA in the Intellectual Property industry, which can be summarized as follows:

  • Clear timelines should be published for each stage of the application process.
  • The Minister should issue a directive clarifying the legal status of previous registrations of service marks.
  • MDAs should retain the power to retrospectively review and invalidate incompetent applications that were mistakenly approved to prevent such applications from going unnoticed.
  • The Minister should publish an updated classification of goods and services that aligns with the current NICE classification.
  • A dedicated body should be established, or an existing body should be empowered to oversee the implementation of the BFA’s provisions.

_____________________________________________________________

For further information on this article and other areas of law, please contact Kelson Emmanuel at S. P. A. Ajibade & Co., Lagos by

_____________________________________________________________

[1]   Trainee Associate, Dispute Resolution Department, S.P.A. Ajibade & Co, Lagos, Nigeria.

[2] See section 1(1) of the BFA.

[3] See section 3(3)(a) of the BFA. Similarly, the MDA is also required to publish a service level agreement will shall contain equivalent items as the published list of requirements, see section 6(1) of the BFA.

[4] See section 3(3)(b) of the BFA.

[5] See section 3(3)(b)(i), (ii) of the BFA.

[6] See section 4(1) of the BFA.

[7] See section 4(5) of the BFA.

[8] See section 4(6) of the BFA.

[9] Section 5(3) of the BFA.

[10] Section 5(1) of the BFA.

[11] The recommendations in this section are also applicable to other sectors of the Intellectual Industry like the Patents and Designs, Copyright, and Plants Varieties Sectors etc., with necessary modifications.

[12] See sections 17, 18, 19, 20, 21 and 22 of the Trade Marks Act Cap T13 LFN 2004.

[13] For example, where the application for registration is opposed or where a decision of the Registrar is appealed.

[14] See sections 3 and 6 of the BFA.

[15] Putting into consideration time within which to appeal the decision of the Registrar.

[16] See section 4(1) of the BFA.

[17] The notification should ideally be in writing.

[18] See section 4(5) of the BFA.

[19] See section 4(6) of the BFA.

[20] See sections 4(7) and 6(4) of the BFA.

[21] BusinessDay (2023) “There should be a regulator for the regulators to oversee the implementation of the BFA”, 8th March, available at https://businessday.ng/news/legal-business/article/there-should-be-a-regulator-for-the-regulators-to-oversee-the-implementation-of-the-bfa-aramide-nwokediuko/ accessed on May 26, 2023.

[22] Section 8(1)(a)(ii) of the Companies and Allied Matters Act, 2020.

[23] See section 69(a) of the BFA.

[24] Service marks serve as source identifiers for marks used in relation to provision of services, as opposed to trademarks that serve as source identifiers to marks used in relation to provision goods.

[25] See the definition of trademarks in section 67 of the TMA.

[26] Also, see section 42(1) of the TMA.

[27] See Elias v FRN & Anor (2016) LPELR-40797(CA).

[28] See,  https://www.wipo.int/classifications/nice/nclpub/. Although Nigeria is not signatory to the NICE Agreement, it is advisable to adopt the classification system in line with the ease of doing business objective.

[29] The impact of inclusion of services has been examined above.

[30] See section 67 of the TMA.

[31] See section 12 of the Patents and Designs Act, Cap P2 LFN 2004.

[32] See section 29(1) of the Patents and Designs Act.

[33] See section 23(1) of the TMA.

[34] From the wording the provision of section 12 of the Patents and Designs Act, an argument can be made for registration of an aesthetic design that also performs a function.

[35] See section 3(2) the Trade Marks Act of the United Kingdom. Also, see the United States’ Supreme Court decision in Traffix Devices Inc. v. Marketing Displays Inc.,532 U.S. 23 (2001).

[36] See, https://www.law.cornell.edu/wex/functionality_doctrine_(trademark)#:~:text=The%20goal%20of%20the%20functionality,going%20through%20the%20patent%20process, accessed on June 4, 2023.

[37] See sections 9, 10, 11, 12, 13 and 62 of the TMA.

[38] This should be included in the Trade Marks Bill.

[39] See section 16 of the TMA.

[40] Paragraph 1 of the First Schedule to the Patents and Designs Act.

[41] Where Minister declares that the patented products and processes are of vital importance for the defence or the economy of Nigeria or for public health.

[42] Paragraph 13 of the First Schedule to the Patents and Designs Act.

[43] At the time this article was written, 112 days have passed since the commencement of the BFA.

[44] BusinessDay (2023), “There should be a regulator for the regulators to oversee the implementation of the BFA”, 8th March. See, https://businessday.ng/news/legal-business/article/there-should-be-a-regulator-for-the-regulators-to-oversee-the-implementation-of-the-bfa-aramide-nwokediuko/ accessed on May 26, 2023.

[45] Ibid.

[46] Ibid.

[47] Nigeria ranks 131 among 190 economies in the ease of doing business. See, https://tradingeconomics.com/nigeria/ease-of-doing-business  accessed on May 26, 2023.

 

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