Intellectual Property
30th December 2019.
Bisola Scott[1]
HOW DO I REGISTER AN INDUSTRIAL DESIGN IN NIGERIA?
SUBSTANTIVE AND PROCEDURAL REQUIREMENTS
FOR REGISTRATION OF AN INDUSTRIAL DESIGN
The Nigerian Patents & Designs Act provides that “any combination of lines and/or colours and three-dimensional form whether or not associated with colours is an industrial design, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.”[2] Industrial designs are the ornamental or aesthetic aspect of an article and include three dimensional features, such as the shape of an article and two dimensional features, such as patterns, lines and colours.[3] They are usually applied to products to enhance their appearance with the intention of hopefully influencing a buyer’s purchase decision.[4]
In Nigeria, an industrial design can be protected by registration, with the Nigerian Patents and Designs Registry. The Patents and Designs Act[5] governs the registration of industrial designs and according to the Act, an industrial design is registrable if it is new and not contrary to public order or morality.[6]
An industrial design is new if it has not been made available to the public before an application for registration is filed at the registry. For instance, if it has been advertised, it will not be regarded as new as it has become part of the public domain. It will also not be regarded as new if it is similar to an existing design and the difference between the design and the existing design is insignificant,[7] or because the product to which the design is applied is different from that of an existing design.[8] According to the Act, an industrial design would not be deemed to have been made available to the public, in the following instances:
- If the applicant can show to the satisfaction of the Registrar of Patents and Designs that the creator of the design could not have known that it had been made available to the public before the date of the application.[9]
- Where the creator had exhibited the design in an official or officially recognized exhibition within the period of six months preceding the filing of the application for registration.[10]
In addition to the requirement of newness, a design will not be registrable in Nigeria if it is contrary to public order or public morality.[12] An industrial design is contrary to public order or morality if the design is inconsistent with the moral and ethical standards recognized in Nigeria including its objectives such as good government, the administration of justice, public services, national economic policy and the proper interest of the state and society.[13]
Industrial designs are created as models or patterns to be multiplied by industrial process and not intended to achieve a technical result i.e. relate to or improve on the functional feature of a product without which the product cannot perform its functions.[14] Hence, if a design relates to a functional feature or improves on the functionality of a product, it will not be registrable as an industrial design and is more suitable for patent protection.[15] In Amp v Utilux[16], the court held that the shape of an electrical terminal for washing machines which were dictated solely by its features and would attract customers because of its functions and not because of an attraction to its shape.
Also, to qualify for registration as an industrial design, a design must be created with the intention to be multiplied by industrial process i.e. replicated by industrial means and where a design is not intended to be multiplied by an industrial process, it may be suitable for copyright protection.[17] An example of a design that is suitable for copyright protection are works of art such as sculpture, drawing and carving.[18]
An application for registration of an industrial design shall be made to the Registrar and should contain the following items:[19]
- a request for registration of the design;
- the applicant’s full name and address and, if that address is outside Nigeria,
- an address for service in Nigeria;
- a specimen of the design or a photographic or graphic representation of the design with any printing block or other means of reproduction from which the representation was derived;
- an indication of the kind of product (or, where a classification has been prescribed, the class of product) for which the design will be used; and
- such other matter as may be prescribed;
The application should be accompanied by the following items:
- the prescribed fee[20]
- where the true creator is not the person who filed the application, a declaration signed by the true creator requesting that his name be included in the Register of designs.[21]
- a signed power of attorney if it is filed by an agent.[22]
The application will be examined by the Registrar as to whether it is contrary to public order or morality[23] and contains the items stipulated above.[24] The Registrar will approve the registration if he is satisfied that the application complies with the requirements without further examination as to whether the registration might be contrary to the requirement of newness.[25] Once it is registered, the applicant will be issued a certificate of registration. The registration subsists for five years from the date of the application and may be renewed for two further consecutive periods of five years upon payment of the prescribed fee.[26]
The Design Rules stipulates that where a design contains a portrait of the President, member of the National Assembly, or a reproduction of the armorial bearings, insignia, orders of chivalry, decorations or flags of any country, state, city, borough, town, place, society, body corporate, institution or person, the applicant will be required to provide an evidence of consent to register and use them.[27] The Registrar may refuse to register the design if the evidence of consent is not provided.[28] Also, where the name or portrait of a living person appears on a design, the applicant would also be required to provide evidence of consent from such person to the Registrar and in the case of a deceased person, evidence of consent from his personal representatives.[29]
Industrial designs that are intended to be applied to the following articles are excluded from registration[30]:
- works of sculpture other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process;
- wall plaques and medals; and
- printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, coupons, dressmaking patterns, greeting cards, leaflets, maps, plans, postcards, stamps, trade advertisements, trade forms, and cards transfers and the like.
An applicant may elect that the design be kept secret for a maximum period of twelve months from the date of the application.[31] Where the applicant elects this, the specimen of the design and kind or class of product which the design will be applied to will be enclosed in a sealed package. The package will be opened by the Registrar when the period of non-disclosure has elapsed, the applicant requests that the application be disclosed or when the expiration period of twelve months has elapsed.[32]
The right to registration of an industrial design vests in the person who is the first to file, even if he is not the true creator of the design.[33] The registration confers upon the registered owner the right to restrict a third party from doing the following acts[34]:
- reproducing the design in the manufacture of a product,
- importing, selling or utilizing for commercial purposes a product reproducing the design; and
- holding such a product for the purpose of selling it or of utilizing it for commercial purposes the following acts.[35]
This article is intended to convey general information and not intended to give legal advice. Questions about any legal matter should be referred to a lawyer for professional guidance and advice.
_______________________________________________________________
For further information on this article and area of law,
please contact Bisola Scott at S. P. A. Ajibade & Co., Lagos by
Telephone (+234.1.270.3009; +234.1.460.5091) Fax (+234 1 4605092)
Mobile (+234.811.389.8102, +234.817.939.0319)
Email: bscott@spaajibade.com
1 Bisola Scott, Associate Intellectual Property & Technology Law Department, SPA Ajibade & Co., Lagos, NIGERIA.
[2] Section 12 Patents and Designs Act, Cap. P2, Laws of the Federation of Nigeria 2004 (PDA).
[3] Ibid.
[4] Ibid.
[5] Cap. P2, Laws of the Federation of Nigeria 2004.
[6] Section 13(1) (a) & (b) PDA.
[7] See Controlled Plastics Ltd. v. Black Horse Plastic Industries Ltd. [1990-1991] FHCLR 180.
[8] Section 13(5) PDA.
[9] Section 13(3) PDA.
[10] Section 13(4) PDA.
[11] (1976) 7 S.C. 97.
[12] Section 13 PDA.
[13] Nwabachili C. (2015),Challenges to Effective Legal Protection of Industrial Designs in
Nigeria. Journal of Law, Policy and Globalization, Vol.33, p.10.
[14] Oyewunmi, A. O. (2015), Nigerian Law of Intellectual Property, pg. 207.
[15] Ibid.
[16] (1972) R.P.C. 103.
[17] Oyewunmi, A. O. (2015), Nigerian Law of Intellectual Property, pg. 207
[18] Ibid.
[19] Section 15(1)(a)(i) – (v) PDA.
[20] Section 15(1)b(i) PDA.
[21] Section 15(1)(b)(ii) PDA.
[22] Section 15(1)(b)(iii) PDA.
[23] Section 13(1)(b) PDA.
[24] Section 15(1) PDA.
[25] Section 16(2) PDA.
[26] Section 20(1) (a) & (b) PDA.
[27] Section 20 Design Rules, Subsidiary legislation to the Patents and Designs Act, Cap. P2, Laws of the Federation of Nigeria 2004.
[28] Ibid.
[29] Ibid.
[30] Section 22 Design Rules, Subsidiary legislation to the Patents and Designs Act, Cap. P2, Laws of the Federation of Nigeria 2004.
[31] Section 18(1) PDA.
[32] Section 18(1)(a)(i)–(iii)PDA.
[33] Section 14(1) PDA.
[34] Section 19(1)(a)-(c) PDA.
[35] Section 19(1) PDA.
