THE ROLE OF PRIORITY DATES IN THE REGISTRATION AND ENFORCEMENT OF TRADEMARK AND PATENT RIGHTS IN NIGERIA

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Franklin Okoro

  1. Introduction

The concept of priority dates in intellectual property law is generally perceived as a restricted grace period during which an intellectual property rights holder, creative or innovator may claim priority over competing rights in respect of a trademark or invention in a desired foreign country, based on an earlier registration in the holder’s home country or any other country where such right was originally or first registered. Pursuant to international IP conventions/treaties, such previously registered trademarks or inventions will be entitled to registration locally and deemed to apply from the same date of application as was originally or first registered in the applicant’s home country or any other country where such right was originally or first registered.

Essentially, the first application becomes the basis of the right of priority and the date of filing of the first application becomes the priority date and where this arises, the later application is regarded as filed at the same time as the first application. The relevance of claiming foreign priority by an intellectual property holder includes expanding the scope of intellectual property protection beyond the holder’s home country to other foreign jurisdictions, securing earliest possible filling dates in other foreign countries to avoid loss of rights, gaining competitive advantages in the marketplace over competitors who may be slower in protecting their intellectual property rights and accessing international markets where such foreign priority claim provides a stronger legal foundation for the holder’s businesses abroad. This article aims to assess the roles of priority dates in the registration and enforcement of trademark and patent rights.

  1. International Treaties governing the claim of Trademark and Patent Priority Dates

Priority dates are recognized and provided for in certain international treaties regulating the international and local registration and enforcement of trademark and patent rights. They include the following:

  • Paris Convention for the Protection of Industrial Property 1883

Article 4, Paragraph A (1) and (2) states that:

(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

 

Article 4, Paragraph C (1) and (2) provides for the commencement and closing periods to which a priority date will apply. The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks. These periods shall start from the date of filing of the first application; however, the day of filing shall not be included in the period.

  • Protocol relating to the Madrid Agreement Concerning the International Registration of Marks 1989

Article 4, Paragraph 2 states that:

“(2) Every international registration shall enjoy the right of priority provided for by

Article 4 of the Paris Convention for the Protection of Industrial Property.”

 

 

  • Patent Cooperation Treaty (PCT) 1970

The PCT simplifies the procedure for submitting international patent applications across member countries. Once a patent applicant has already filed a PCT patent application with the International Bureau of World Intellectual Property Organization (WIPO), such grant of letters patent to the applicant will be deemed an international patent registration.

Article 8, Paragraph (1) and (2)(b) provides for the right of an international applicant to claim priority:

(1) The international application may contain a declaration, as prescribed in the PCT Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.

(2) (b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.

 

The PCT Regulation 2022 affords an applicant a priority period to file a PCT patent application with the International Bureau of the World Intellectual Property Organization (WIPO)” within “12 months from the filing date of the earlier application whose priority is so claimed.” However, “the day of filing of the earlier application shall not be included in that period”. The PCT Regulation 2022 also furnishes the conditions required of an applicant to claim priority before the International Bureau of WIPO.

These international treaties cited above go on to serve as the basis for the provision of priority claims in national laws domesticated by various member states.

  1. Application of Priority Dates to Trademarks and Patents in Nigeria

Trademarks:

Based on international arrangement, Nigeria adopted the rule of foreign priority as contained in its Trade Mark Act as a national treatment gesture to applicants from convention countries signatory to similar international treaties governing the global administration of trademarks.  Hence, according to the laws regulating trademarks in Nigeria, when a trademark application seeking priority is to be filed with the Nigerian Trade Marks Registry, an applicant is required to provide a copy of the original application filed with the Convention country and from which the applicant is claiming priority and the applicant’s new Nigeria application is, in effect, backdated to the priority date of the original application. Section 44 of the Nigeria Trade Marks Act caters for the claim to priority of an original Convention trademark registration application. It reads thus:

  1. (1) Any person who has applied for protection for any trade mark in a Convention country or his legal representative or assignee shall be entitled to registration of his trade mark under this Act in priority to other applicants; and the registration shall have the same date as the date of the application in the Convention country: Provided that-

(a) this subsection shall not apply unless application for registration is made within six months from the application for protection in the Convention country; and

(b) nothing in this section shall entitle the proprietor of the trade mark to recover damages for infringements happening prior to the actual date on which his trade mark is registered in Nigeria.

 

Regulation 23 of the Nigeria Trade Mark Regulations 1967 also provides that:

(2)  Every application claiming priority under section 44 of the Act by reason of an application to register the trade mark made or deemed to have been made in a Convention country as defined in section 44(5) of the Act which country shall be named, shall state the date of that application and the applicant shall furnish a certificate by the Registrar or other registering authority of that country, or shall otherwise verify the application made or deemed to have been made therein to the satisfaction of the Registrar.

 

Despite the existence of foreign priority guidelines in the Nigeria Trade Marks Act and Regulation, there is no implementation of these guidelines in practice, thereby creating a gap between the regulatory provisions and the execution of foreign priority rules. Although, a foreign priority date may be indicated in a trademark registration application in Nigeria, the enforcement of same is an arduous task. This gap tends to deny foreign applicants the opportunity to gain competitive edges in the marketplace over competitors who may be slower in protecting their intellectual property.

The failure to effectively put guidelines into action and enforce them concerning the priority given to foreign trademarks can create inconsistent protection for brands, affecting their ability to safeguard their trademark rights in Nigeria promptly. It will also project legal uncertainty likely to deter foreign investment or collaboration due to unpredictability in protecting trademarks in Nigeria and make foreign trademark owners reluctant to introduce new products or services to the country. Nigeria may also face difficulty regarding the national treatment of trademark administration. The lack of adherence to the rules of foreign priority established by applicable international treaties will likely strain relationships with other foreign trademark owners from Convention countries and constitute a breach of Nigeria’s international obligations.

Patent:

As a signatory to the Patent Cooperation Treaty (PCT), Nigeria’s patent laws provide for the doctrine of foreign priority to the patent registration of an invention (i.e., a technical product or process) in Nigeria. Where an application for a patent grant has been made in another Convention country, and subsequently, a corresponding application is made in Nigeria (for the same invention), the latter application (in Nigeria) shall be treated as having been made on the day when an earlier application (in that other Convention country) was made. Consequently, to determine whose application is earlier, such foreign application will be prioritized over competing applications filed locally within 12 months before submitting the Nigeria patent registration application.

 

Section 27 of the Nigeria Patents and Designs Act generally provides for the priority right of a patent registration applicant and other requirements to claim priority for an invention. Section 27(2)(a) of the Act reads:

(2) So long as there is in force an order declaring a country to be a convention country, a patent application in Nigeria, if an earlier corresponding application for the protection of an invention has been made in that convention country, shall be treated as having been made on the date when that earlier application was made:

Provided that this subsection shall not apply where the earlier application was made–

(a) in the case of an invention, more than twelve months before the application in Nigeria.

Where an applicant for a patent registration seeks to avail oneself of a foreign priority in respect of an earlier application made in a country outside Nigeria, the patent registration application in Nigeria should contain the following specific requirements related to the earlier foreign application:

  1. a written declaration showing the date and number of the earlier application;
  2. the country in which the earlier application was made;
  • the name of the applicant who made the earlier application;
  1. provide within three months thereafter, a certified true copy of the earlier application issued by the Industrial Property Office (or its equivalent) in the Convention country where the earlier application was made.
  2. also, where an application is in a language other than English, a translation together with the name of the language shall be signed by the applicant or his agent and attached to the certified application.

Under the Nigeria Patent Act, the patent registrar is required to refuse or disregard a claim for foreign priority where the above provisions for claiming foreign priority are not complied with. However, where the above requirements are fully adhered to and to the satisfaction of the patent registrar, a patent certificate or letters patent will be issued by the registrar containing the number and date of the application on which a claim of foreign priority is based and the name of the foreign country concerned.

Unlike the governance of trademarks in Nigeria, the claim of foreign priority for patent registration is usually enforced and implemented by the Nigeria Patents Registry. Hence, where an applicant indicates in an application for patent registration the claim for foreign priority, the Registry usually treats such application as filed on the date of the original application in the Convention country, provided the Convention country is listed in an order declared by the Minister, who with a view to the fulfilment of a treaty, Convention or other international arrangement or agreement to which Nigeria is a party, will make such order in the Federal Gazette that any country specified in the order is a Convention country to claim foreign priority.

 

  1. Case Study on the claim of Foreign Priority Dates

Broadcast Innovation, L.L.C. and IO Research Pty Ltd. v. Charter Communications, Inc., and Comcast Corporation

This case revolved around the contentious validity of U.S. Patent No. 6,076,094 (‘094 patent) and raised issues regarding determining its priority date under U.S. patent law. The ‘094 patent pertained to a distributed database system integral to data broadcasting and datacasting communications media. The main issue was that the ‘094 patent did not directly mention the first international patent (PCT) application, even though it was connected to later patents from that initial application.

Charter Communications, Inc. (Charter) had, before trial, filed a motion for summary judgment at the district court asserting that the ‘094 patent was invalid under the U.S. patent law provision for conditions of patentability due to its priority date being more than one year after the publication of the invention’s first international patent (PCT) application. The district court granted Charter’s motion, and Broadcast Innovation subsequently appealed.

The Court of Appeals for the U.S. Federal Circuit (CAFC) reversed the district court’s determination regarding the invalidity of the priority claim to the Patent Cooperation Treaty (PCT) application. The district court had determined that the priority claim should be based on the U.S. filing date. The priority claim was deemed invalid because it was outside the 12-month priority period. The CAFC reversed this ruling and confirmed that the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application, resulting in an earlier effective filing date within the 12-month priority period.

 

  1. Conclusion

Priority dates continue to play an essential role in protecting a trademark and patented invention. For trademarks, it prevents the emergence of confusingly similar marks from being registered in a market where an original mark is already registered, being used, and has gathered substantial goodwill and consumers’ trust. For patents, it forestalls the rise of similar inventions with inadequate patentable conditions of novelty, and that falls within the category of existing prior art.  Moreover, priority dates play a pivotal role in guiding judicial decisions concerning opposition claims, trademark disputes, and patent infringements. It offers crucial guidance to judges, juries, or registrars, aiding in the determination of which trademark or patent application was initially filed and has previously held dominance within the commercial landscape.

This author recommends that the Nigeria Trade Marks Registry should raise and adopt policies on the recognition and enforcement of foreign priority dates that will align the legislative provisions of the Nigeria Trade Marks Act and Regulation with actual practice in compliance with the country’s internationally assumed obligations. Hence, implementing standard procedures for confirming and enforcing foreign priority claims will ensure consistency and fairness in processing trademark registration applications from Convention countries and create a suitable commercial environment for foreign trademark owners. At the same time, Nigeria still upholds its commitments to the international community.

Over the years, patent filings in Nigeria have seen significant advancements, yet challenges persist. Subsequent amendments in patent filings at the Nigerian Patents Registry often face procedural issues, and the patent system requires an evolving approach to accommodate amendments post-filing by providing comprehensive and clear guidelines and streamlined processes that would enhance efficiency and reduce ambiguity, facilitating smoother subsequent amendments.

The Nigerian Patents Registry also adopts the electronic filling method, which brings convenience, but integrating them into current systems is challenging. The Registry needs to upgrade its infrastructure and strengthen technical support to improve electronic filing systems. This will help more applicants use and rely on these systems by making them accessible and reliable for every applicant involved.

For Convention-country patent applications with the Nigerian Patents Registry, the Registry should collaborate with the International Bureau of WIPO in creating a synchronized digital platform that will aid the seamless patent filing process for foreign patent applicant(s) on the national patent portal in Nigeria. This will also expedite filings, enhance accessibility, and promote international cooperation in protecting patent rights in Nigeria.

In navigating these challenges, Nigeria can fortify its position as an attractive destination for patent filings. Nigeria can also continue to create confidence and strengthen relationships with foreign trademark and patent owners by demonstrating dedication to international treaties and agreements on foreign priority claims, guaranteeing reciprocity and favourable national treatment for Nigerian trademarks and patents overseas.

_________________________________________

For further information on this article and area of law, please contact
Franklin Okoro at
S. P. A. Ajibade & Co., Lagos by
Telephone (+234.1.270.3009; +234.1.460.5091), Fax (+234 1 4605092)
Mobile (+234 706.054.1804, +234.811.389.8102)
Email: fokoro@spaajibade.com
www.spaajibade.com

Footnote

  1. Franklin Okoro, Associate, Intellectual Property and Technology Department, S.P.A. Ajibade & Co., Lagos, Nigeria.
  2. Resolution Law Firm, ‘Procedure For Patent Priority Application In Nigeria – PCT Filing In Nigeria’, available at https://www.mondaq.com/nigeria/trademark/1036850/procedure-for-patent-priority-application-in-nigeria–pct-filing-in-nigeria#:~:text=Area%3A%20Intellectual%20Property%20Law&text=The%20first%20application%20becomes%20the,time%20as%20the%20first%20application, accessed 28th October 2023.
  3. See, https://www.unido.org/sites/default/files/2014-04/Paris_Convention_0.pdf accessed 28th October 2023.
  4. See, https://www.wipo.int/treaties/en/registration/madrid/ accessed 28th October 2023. See also, Rule 9(4)(a)(iv) of the Common Regulations under the Madrid Agreement and Protocol 2009.
  5. See, https://www.wipo.int/export/sites/www/pct/en/docs/texts/pct.pdf accessed 28th October 2023.
  6. See, Rule 2, Paragraph 2.4 of the Patent Cooperation Treaty Regulation 2022.
  7. See, Rule 4, Paragraph 4.10 of the Patent Cooperation Treaty Regulation 2022.
  8. Cap. T13, Laws of the Federation of Nigeria, 2004.
  9. See John Onyido, chapter contribution, Impediments to the Reception of International Treaties and Unintended Impact on the Growth of Nigeria’s Intellectual Property Regime, “Legislative Drafting: Nigerian
  10. Practice of Domestication of Treaties” edited by Femi Falana, SAN.
  11. Nigeria Patents and Designs Act (1971), Cap. P2, Laws of the Federation of Nigeria, 2004.
  12. See, Section 3 (4) (a) & (b) of Nigeria Patents and Designs Act (1971), Cap. P2, Laws of the Federation of Nigeria, 2004. Also, see Rule 8(2) & (3), Nigeria Patent Rules (1971).
  13. Section 4 (1) (c) of the Nigeria Patents and Designs Act (1971).
  14. Rule 15, Nigeria Patent Rules (1971).
  15. Section 27 (1) of the Nigeria Patents and Designs Act (1971). See John Onyido, chapter contribution, Impediments to the Reception of International Treaties and Unintended Impact on the Growth of Nigeria’s Intellectual Property Regime, “Legislative Drafting: Nigerian Practice of Domestication of Treaties” edited by Femi Falana, SAN.
  16. 420 F.3d 1364 (Fed. Cir. 2005). See https://law.justia.com/cases/federal/appellate-courts/F3/420/1364/539001/ accessed 4th November 2023.
  17. See, https://www.wipo.int/export/sites/www/pctcaselawdb/en/docs/pct-2009-0001.pdf accessed 4th November 2023.

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