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ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS IN NIGERIA

Article · October 2021

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 ENFORCEMENT OF INTELLECTUAL PROPERTY
RIGHTS IN NIGERIA

OSHO OLUDOTUN OLANIYI1

ABSTRACT

Intellectual Property Right (IPRs) is assuming increasing importance in recent times.

This is attributed to industrialisation and developments in modern technologies in media.
This positive contribution also has its attendant challenges in terms of easy infringement
of such rights in terms of piracy and counterfeiting. The effect is that it deprives the
owners of such work the benefits derivable from their labour, time and expense.

Globally there has been a compelling effort towards the protection of IPRs. This paper
substantially highlights the concept of intellectual property rights, it examines the legal
and institutional framework for the enforcement of IPRs in Nigeria. It also explores the
enforcement provisions in IP Bills under the legislative process in Nigeria.

The paper discussed the challenges of enforcing intellectual property rights in Nigeria
and also made a recommendation. The paper concluded that the various IP legislations
may be obsolete, as they did not contemplate the new mode and style of infringement that
has been overtaken by internet media. This calls for a review of the Laws and Bills as the
provisions in the proposed Bills are not adequate.

Keywords: Intellectual Property Rights; Infringement; and Enforcement.

INTRODUCTION

Intellectual Property Rights (IPRs) are the rights given to a person on the creations or
works. The right given is exclusive over such works for a certain period.2 Speaking
broadly, IPRs grouped into two to wit: Copyrights and Industrial Property. Copyrights are
the rights that creators or innovators “have over their literary and artistic works. Works
covered by copyright range from books, music, paintings, sculpture, and films, to

1
Osho Oludotun Olaniyi is a legal practitioner and LL.M. Candidate at Babcock University, Ogun State. E-
mail: osho0192@pg.babcock.edu.ng. This is one of my Seminar presentations in February, 2021 towards
the award of Masters of Laws Degree.
2
WTO, ‘What are intellectual property rights?’ found at
<https://www.wto.org/english/tratop_e/trips_e/intel1_e.htm> accessed16 February 2021.

1
computer programs, databases, advertisements, maps, and technical drawings.”3 On the
other hand, Industrial Property relates to those intangible properties such as trademarks
industrial designs and patents.

In general terms, IPRs infringement is any breach of intellectual property rights.

According to the Black’s Law Dictionary, it is the act of interfering with ‘one of the
exclusive rights of a patent, copyright, or trademark owner.’ 4 IPRs are said to be
infringed when a work protected by IP laws is used, copied, distributed or otherwise
exploited without the consent or authority of the owner of the IPRs.5 The major means
through which IPRs are infringed are piracy and counterfeiting. Piracy on the other hand
is the unauthorized copying, use, reproduction and/or distribution of materials protected
by intellectual property rights.6 The similarity in the words, language and style of the
original and pirated work is immaterial in determining whether or not has been pirate.
The core issue is where any substantial part of the work has been exploited. 7
Counterfeiting is the act of mimicking authentic or original goods, with in most cases
substandard quality. Under counterfeiting the real intent is to deceive the unsuspecting
public and to pass the inferior goods as the original or for superior value.

IPR piracy and counterfeiting has become a big industry in Nigeria. Owners of protected
works often focus on creating works with less attention on deriving maximum benefit
from it. The Internet media and use of mobile smart phones has made streaming,
distribution, broadcasting and unauthorised reproduction of protected works very ease.
Unfortunately, some owners either out of ignorance of their right do not consider the
unauthorized distribution of their works as an infringement. Some owners even look
away when their work is found to be infringed upon. To some, it is beneficial in the sense
that they are being promoted without any effort or resources being invested in the
venture.8

3
WIPO “What is Copyright” https://www.wipo.int/copyright/en/ accessed on 16th February 2021.
4
Bryan A. Garner Black’s Law Dictionary Eight Edition Thomson West P. 796
5
European Union IP Helpdesk “What is an IP infringement: Infringement and Enforcement?”
https://www.iprhelpdesk.eu/node/3188 accessed on 16th February 2021.
6
Bryan A. Garner Black’s Law Dictionary Eight Edition Thomson West P. 1186
7
K. M. Waziri, ‘Intellectual Property Piracy and Counterfeiting in Nigeria: The Impending Economic and
Social Conundrum’ (2011) Journal of Politics and Law Vol. 4, No. 2; September 2011
<https://www.researchgate.net/publication/266469113> accessed 18th February 2021.
8
Dorcas A. Odunaike (2016) “Personality Merchandising in Nigeria: Prospects and Challenges” Journal of
Law, Policy and Globalization ISSN 2224-3240 (Paper) ISSN 2224-3259 (Online) Vol.55, 2016 found at

2
Enforcement means the act of ensuring that a system is adhered to or obeyed.9 According
to the Black’s Law Dictionary, it is the ‘act or process of compelling obedience or
compliance with a law, mandate, command, decree or agreement’.10 In terms of IPRs,
‘enforcement’ will mean the prevention of infringement of IPRs rights and ensuring
remedies to the injured IPR owner where an infringement has occurred. 11

The World Intellectual Property Organization’s Advisory Committee on

Enforcement12 has revealed that globally the value of IPRs has been undervalued and this
is as a result of ineffective and inefficient enforcement systems or regimes. IP as an assets
are often considered as less important or ignored particularly in a country like Nigeria.
This is because they are intangible assets.13

NIGERIA AND INTERNATIONAL REGULATIONS ON ENFORCEMENT OF

IPRS.

There are many international treaties and conventions that addresses IPRs and their
protection and to which Nigeria is a signatory, has ratified or adopted.

The Berne Convention14 is an international treaty that attempts to harmonise copyright

protection across member countries. The Convention provides that Authors of creative
works shall enjoy rights conferred under the Convention and their country of origin, in
member countries.15 Domestic law governs the protection enjoyed by an author in the

https://iiste.org/Journals/index.php/JLPG/article/view/34237/35209 accessed on 16th February 2021

9
Adetola Adeleye (2016) “Intellectual Property Rights Enforcement In Nigeria: Regulatory Agencies To
The Rescue” Journal of International Law accessed at https://pennjil.com/intellectual-property-rights-
enforcement-in-nigeria-regulatory-agencies-to-the-rescue/ on 16th February 2021.
10
Bryan A. Garner Black’s Law Dictionary Eight Edition Thomson West P. 569
11
Olubiyi, Ifeoluwa Ayokunle. "A Comparative Analysis of Copyright Enforcement Provisions in Nigeria:
Maximising the Current Legal Regime." Nnamdi Azikiwe University Journal of International Law and
Jurisprudence, 5, 2014, p. 89-104. HeinOnline.
12
U.N. WIPO Advisory Committee on Enforcement, 8th Sess., U.N. Doc. WIPO/ACE/8 (Dec. 19–20,
2012).
13
Ibid.
14
The “Berne Convention” is otherwise known as the Berne Convention for the Protection of Literary and
Artistic Works of 1886. It was signed on 9 September 1886 and became effective on 5 December 1887.
The Convention was amended on 28th September 1979. It deals with the protection of works and the rights
of their authors. It contains series of provisions, which sets minimum protection for creative works. See
https://www.wipo.int/treaties/en/ip/berne/ and https://wipolex.wipo.int/en/text/283693 accessed on 12th
March 2021
15
Article 5(1) of the Berne Convention (as amended on 28th September 1979

3
country of origin. However, a foreign work or author will enjoy the same rights as a
national author under this Convention.16

In essence, the right granted under copyright is limited to the territorial space of each
country. The right enjoyed under the copyright law of a country cannot be extended to
another country. For instance, the copyright protection over a sound recording in Nigeria
cannot be extended to Ghana. Each countries copyright laws grants protection separately
and independently.17 Nigeria became a party to the Berne Convention on 14 September
1993.18

The Universal Copyright Convention (UCC) is one of the major international

agreements on the protection of copyrights. This Convention was drawn up by the United
Nations Educational, Scientific and Cultural Organization (UNESCO) and was
adopted in 1952 in Geneva, Switzerland. It came up as an alternative for those countries
that disagreed with the Berne Convention. Nigeria became a member of the Union on
14th February 1962.19

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is

a transnational legal covenant amongst the member states of the World Trade
Organization (WTO). 20 The TRIPS Agreement became effective from 1st January
1995and till date remains the most robust multilateral agreement on intellectual property
21
globally. The Agreement set out the minimum standards expect of national
governments on many form of intellectual property.22

16
Article 5(3) of the Berne Convention (as amended on 28th September 1979
17
Ifeoluwa Olubiyi “Proving the Qualification of the Author in Enforcing Foreign Copyright in Nigeria:
Microsoft Corporation v. Franike Associates Ltd” found at
https://www.academia.edu/24785925/Proving_the_Qualification_of_the_Author_in_Enforcing_Foreign_C
opyright_in_Nigeria_Microsoft_Corporation_v_Franike_Associates_Ltd accessed on 12th March 2021
18
See the Berne Notification No. 147 - Berne Convention for the Protection of Literary and Artistic Works,
Accession by the Federal Republic of Nigeria at
https://www.wipo.int/treaties/en/notifications/berne/treaty_berne_147.html accessed on 10th March 2021
19
See the List of parties to International Copyright Agreements
<https://en.wikipedia.org/wiki/List_of_parties_to_international_copyright_agreements> accessed 12 March
2021
20
World Trade Organisation, ‘Overview the TRIPS Agreement’
<https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm> accessed 19 February 2021
21
See TRIPS Agreement, available at<https://en.m.wikipedia.org/wiki/TRIPS_Agreement>. accessed 19th
February 2021
22
See TRIPS Art 1(3) at <https://www.wto.org> trips_e>intech_e> accessed 19th February 2021

4
The TRIPS Agreement made some specific recommendation in terms of enforcement of
IPRs for member nations. Two of the three (3) main feature of the Agreement relates to
the Enforcement of IPRs and Dispute Resolution.

Enforcement of IPRs:

The Agreement make provisions for standard general rules and procedures for
enforcement of IPRs. These include: civil and administrative procedures and remedies;
provisional measures; and special requirements relating to international border
processes.23 For example, Section 2 of Part III of the TRIPS Agreement provides that
the owners of an infringed work should be given opportunity access the courts against an
infringer of his intellectual property rights/work. It states that the civil and administrative
procedure must be objective and equitable.24 Concerning remedies, judicial authorities
must have the power to award three types of remedies to wit: injunctions, damages and
other remedies25 The Agreement also make rules for criminal procedure in Article 61 as
well as the remedies to ensure a right holder can be redressed in cases of infringement.26

Other treaties, conventions and agreement to which Nigeria has adopted include, the
Paris Convention for the Protection of Industrial Property of 1883, which was
ratified by Nigeria in 1963. In October, 1993, Nigeria also ratified the Rome Convention
for Performers, Producers of Phonograms and Broadcasting Organisations of 1961.
The Patent Law Treaty and the Patent Cooperation Treaty were both signed in 2005
by the Nigerian government.27

Nigeria is also assumed the membership of the some international organisation saddled
with the administration of IPR conventions and protocols. Examples are: the World
Intellectual Property Organization (WIPO); the World Trade Organization (WTO)
in January, 1995 and the African Regional Intellectual Property Organization
(ARIPO), an African sub-regional organisation on Intellectual property.

23
Art. 51 of TRIPS
24
Art 42 TRIPS Agreement
25
Art 45(1)
26
Art. 61 of TRIPS
27
The Lawyers Chronicle “A brief analysis of intellectual property law in Nigeria” available at
http://thelawyerschronicle.com/a-brief-analysis-of-intellectual-property-law-innigeria accessed on 16th
February 2021.

5
ENFORCEMENT OF FOREIGN COPYRIGHT IN NIGERIA

Ordinarily, by the provision of Section 2 of the Copyright Act, only copyright works
that its author or any of the joint authors are Nigerian citizens or domicile in Nigeria as at
the time the work was done or created, are protected under the Nigerian Copyright Act.

However, for a foreign copyright to be protected under the provisions of the Copyright
Act, the author (or any of the joint authors) must be a Nigerian or domicile in Nigeria at
the time when the work is made28 and in the case of a company, it must be incorporated
in Nigeria.29 Other foreign copyrights will only enjoy protection, where its country of
origin has been granted a reciprocal treatment in accordance with the provisions of the
Act.

Section 41 of the Copyright Act makes provisions for reciprocal treatment for
copyright protection to the effect that a Minister may by an order published in the
Federal Gazette extend the application of the Copyright Act to any (or all) protected work
of the country, where the Minister is satisfied that the country in question is party to a
treaty or international agreement in which is Nigeria is also a party and that the country
has extended similar copyright protection for Nigerian works.

By the provisions of Section 5(2) Copyright Act, where the question arises as to whether
the country is a party to an international agreement or treaty to which Nigeria is also a
party, a certificate from the Nigerian Copyright Commission (NCC) to that effect shall be
conclusive proof of that fact. As a result, a foreign copyright owner who wants to enforce
his right or seek protection in the Nigerian Court must be armed with a certificate from
the Nigeria Copyright Commission and a gazette evidencing the Order of the Minister.30

Judicial decisions in Nigeria has been consistent over the years on the position that the
Nigerian Copyright only protects copyright works of Nigerian origin and does not extend
to foreign copyrights except with certain conditions.31 In Island Records Ltd and Ors v.

28
Section 2(1) Copyright Act
29
FO Babafemi, Intellectual Property, the Law, and Practice of Copyright, Trade Marks, Patents and
Industrial Designs in Nigeria (Justinian Books Ltd 2006) 39–40.
30
Ifeoluwa Olubiyi, ‘Proving the Qualification of the Author in Enforcing Foreign Copyright in Nigeria:
Microsoft Corporation v. Franike Associates Ltd’
<https://www.academia.edu/24785925/Proving_the_Qualification_of_the_Author_in_Enforcing_Foreign_
Copyright_in_Nigeria_Microsoft_Corporation_v_Franike_Associates_Ltd> accessed 12 March 2021.
31
Bankole Sodipo (2020) Are foreign copyright works protected in Nigeria? Queen Mary Journal of
Intellectual Property, Vol. 10 No. 2, pp. 238–254

6
Pandun Technical Sales and Services Ltd,32 six of the nine plaintiffs were incorporated
the United States of America and England, while the remaining three were Nigerian
companies. They sued defendants for the infringement of copyright in photographs and
sound recordings. The trial court in dismissing the suit held that copyrights of foreign
companies are not protected under the Copyright Act 1970. The Court further stated that
by the provisions of Sections 2(1)(b) and 3(1) of the Copyright Act 1970, since the
alleged authors of the sound recordings are foreign companies when the work was first
recorded, the Plaintiffs lacks the right standing to bring an action for protection under the
Copyright Act 1970.

The case of Societe Bic S.A. v. Charzin Industries Limited and Anor33 was contested
under the Copyright Act, 1988. 34 In this case, a French company sued for the
infringement of its copyright. Expectedly, the Plaintiff’s case was greeted with an
objection from the Defendant that the plaintiff couldn’t claim any copyright or protection
in Nigeria by Section 2(1) of the Copyright Act, 1988. The trial court in upholding the
Defendant’s objection held that, ‘only a Nigerian Citizen or Nigerian incorporated
Companies can sue in this Court for infringement of Copyright’.35

Of particular importance is the decision of the Court of Appeal, Lagos Division in the
case of Microsoft Corporation v. Franike Associates Ltd.36 The appellant filed the action
to restrain the Respondent from infringing on the Appellant’s “WINDOWS” operating
system/software for computers. At the point of instituting the action, the Appellant had
sought and obtained an ex parte order restraining the Respondent pending the
determination of the motion on notice.

Subsequently, the Respondent filed an objection on the ground that lack of jurisdiction to
entertain the action and sought the vacation or discharging the ex-parte orders earlier
granted by the court. The trial court sustained the objection and struck out the suit.

On appeal, the Court of Appeal upheld the decision of the trial Court. It held that the
appellant did not only fail to produce any certificate from the Nigerian Copyright
Commission as per the provision of Section 5(2) of the Copyright Act but also failed to

32
(1993) FHCLR 318.
33
(1997) FHCLR 727. Can also be found at [1990–1997] 2 IPLR 335.
34
Section 2(1) of the Copyright Act, 1988 is in pari materia with s 2(1) of the 1970 Act.
35
[1990–1997] 2 IPLR 335 at 342
36
(2012) 3 NWLR (Pt. 1287) 301, (2011) LPELR-CA/L/573/2008; (2012) 5 CLRN 145.

7
present a copy of the Federal Gazette containing the reciprocal extension of protection
made by the Minister in line with Section 41 of the Copyright Act.

The position of the Courts in the above civil cases appears to have gain recognition in
criminal proceedings of Nigerian Copyright Commission v. Nnam Sunday Gabriel.37 In
Gabriel’s case, the Defendant was charged with copyright infringement of foreign work
before the Federal High Court, Uyo Division, Akwa Ibom. The Court in discharging the
Defendant and releasing the alleged infringed work back to Defendant, held that there no
evidence of the Order of the Minister extending the application of the Nigerian Copyright
Act to the foreign works listed in the charge.38

The above decisions of the Nigerian Courts suggest that Nigerian copyright law does
provide protection for the copyright of foreign nationality and it further queries Nigeria’s
willingness to honour its copyright obligations under international agreements and
treaties mentioned above.39

LEGAL FRAMEWORK OF THE ENFORCEMENT OF IPRS IN NIGERIA.

IPRs protection and enforcement are governed by the Copyright Act40 Trademarks
Act, 41 the Patents and Designs Act, 42 the Merchandise Marks Act, 43 Trade
Malpractices (Miscellaneous Offences) Act44 and the Common law principles.

Copyright Act45

As stated earlier, the Act makes provision for the protection of copyrighted works of
Nigerian nationality, with extended but conditional protection for foreign works.

Civil Remedies

37
Unreported Suit No: FHC/UY/81c/2013, per Ojukwu J, judgment delivered on Wednesday 3rd of
February, 2016.
38
Bankole Sodipo (2020) Are foreign copyright works protected in Nigeria? Queen Mary Journal of
Intellectual Property, Vol. 10 No. 2, pp. 238–254
39
ibid
40
Copyright Act (1990) Cap. (C28), LFN, 2004.
41
Trade Marks Act, Cap. T13, LFN, 2004
42
Patents and Designs Act, Cap. P2, LFN, 2004
43
Merchandise Marks Act, Cap. M10, LFN, 2004
44
Trade Malpractices (Miscellaneous Offences) Act, Cap. T12, LFN, 2004
45
Copyright Act (1990) Cap. (C28), LFN, 2004.

8
The Act provides civil remedies against infringers of Copyright, Performance Right
and Folklore. The Act considers an infringement to be a breach of statutory duties owed
by the infringer to the person entitled to the copyright.46 The civil remedies available to
the owner of an infringed copyright include conversion rights 47 , damages, 48
injunctions49 and accounts.50 There is also an Inspection and Seizure Order51, which
permits a Copyright Owner to enter the premises of the infringer on the Order of Court to
inspect the infringing items or works. The order can be obtained through an ex parte
application from the court. The purpose of this order is to discover and preserve evidence
of such infrigment found un the custody the defendant, particular where there is
possibility of the evidence been tampered with.

Criminal liability

Section 20 (1) (2) and (3) of the Act make provision for three (3) sets of criminal
liability under Copyright. Section 28 of the Act also made provisions for the
infringement of Performer’s Right, while Sections 32 and 33 criminalise any
infringement of Folklores.

Section 22 make corporate bodies criminally liability for acts infringement; but
significantly only the directors, secretaries or other officers of such bodies that know of

46
C A, 1990 s19 ss1, 2
47
Section 11 of the Copyright Act, which deems all infringing copies of any work in which copyright
subsists to be the property of the owner, assignee or exclusive licensee. Therefore the owner may take
proceedings to take possession of the infringing copies. This type of remedy was granted by the Court in
the case of Beecham Group Limited v Esdee Food Products Nigeria Limited (1981) FHCLR 177 where the
Court ordered the defendants to deliver upon oath for destruction all the goods, cartons, wrappers, blocks,
discs, or stamps bearing any mark or material that would be in breach of the injunction which had been
granted.
48
Damages refer to monetary compensation paid to a copyright owner for infringement of his rights.
Damages were awarded in the case of Beecham Group Limited v Esdee Food Product Nigeria Limited
(1999) FHCLR 477. The principle governing the award of damages in intellectual property rights are set
out in the case of General Tyre and Rubber company v Firestone Rubber Company Limited (1976) 893
RPC 197.
49
Injunctions are an order of the Court restraining the person from further infringing on the copyright. The
types of injunctions are Interim injunction, which is only for a very short time. It is required in cases of
urgency and pending the hearing and determination of the actual application for an injunction. The
interlocutory injunction, which is usually granted pending the final determination of a case on the merits.
Perpetual Injunction- is a final relief as it ensures that the infringer never interferes or infringes with the
subject matter again.
50
Section 16(1) and (3) of the Copyright Act.
51
The Inspection and Seizure Order is provided for under Section 25 of the Copyright Act. It similar to the
Anton pillar Injunction., On 8th August 2019, the Federal High Court in sitting in Abuja in the case of
Western Lotto Nig. Ltd v. K.C. Gaming Networks Ltd, 53 granted an Anton Pillar order authorizing
Sheriffs of the Federal High Court in Lagos to raid the 'Bet9ja' Lagos office to recover a seal suspected to
infringe the copyright of 'Lotto9ja', a rival gaming lottery company

9
the infringement will be liable to the punishment prescribed in Section 23 of the Act. Of
significant importance is the provisions of subsection (1) and (2) which cast the onus of
the proof of innocence on the accused person. Yusuf Ali (SAN) 52 has argued that this
provision is against the provision of Section 36(5) of the 1999 Constitution as amended,
which provides that every person who is charged with a criminal offence shall be
presumed to be innocent until he is proved guilty. It should be noted that Section 36(5) of
the 1999 Constitution has a proviso to the effect that the presumption of innocence
guaranteed by the constitution will not invalidate any law which imposes the burden of
proving a particular fact on the accused person.

It is therefore the humble opinion of the writer that the proviso to Section 36(5) justifies
the provisions of Section 20(1) and (2) of the Copyright Act. Since infringements are
often done in a way that it becomes difficult to ascertain the difference between the
original and a counterfeit. The provisions are apt in that it relieves the State from proving
beyond reasonable doubt that the accused infringed the copyright of the owner. The
burden of proof is saddled on the accused to show that he has not committed copyright
infringement.53

An infringer can raise the defence of Innocent Infringement if he can show to the
satisfaction of the Court as at the time of the alleged infringement that, he is was not
aware and had no reason to believe that the infringing copy is a copyrighted work.54

Punishment for Infringement

The punishment for infringement, in the case of individuals, may be an imposition of a

fine ranging from N100 – N500, 000.00 per copy of infringing work to imprisonment for
a term ranging from six (6) months to five (5) years55

The Nigeria Copyright Commission is usually the prosecutor in criminal cases involving
infringement under the Act. However, the fact a criminal case has been initiated against

52
Y.O. Ali, ‘The Nigerian Copyright Act And Criminal Liability”
<https://yusufali.net/articles/THE_NIGERIAN_COPYRIGHT_ACT_AND_CRMINAL_LIABILITY.pdf>
accessed 16 February 2021.
53
M. I. O. Nwogu, ‘The Challenges Of The Nigerian Copyright Commission (NCC) In The Fight Against
Copyright Piracy In Nigeria’ (2014) Global Journal of Politics and Law Research Vol.2, No.5, pp.22-34,
<http://www.eajournals.org/wp-content/uploads/The-Challenges-Of-The-Nigerian-Copyright-Commission-
Ncc-In-The-Fight-Against-Copyright-Piracy-In-Nigeria.pdf> accessed on 19 February 2021
54
S.20 of the Copyright Act (1990) Cap. (C28), Laws of the Federation, 2004
55
CA (1990) s20 LFN, 2004

10
the infringer will not after the right of the copyright owner to commence a civil claim
against the infringer for remedies.56

PATENT AND DESIGNS ACT

A Patent is a right usually grants by the government to protect new inventions or

enhancements made on existing inventions.57 Patents and Designs Act (PDA) is the
principal law on patents in Nigeria.

When a Patent is given in respect of an invention, a Letter of Grant is issue to the

Statutory Inventor58 concerning the invention in issue. The law also places a mandatory
requirement that the name of the true inventor be mentioned in the grant, this right
conferred on the true investor cannot be waived.59

The Grant of the Patent confers on the Patentee exclusive rights (where the grant is in
respect of a product) to make, import, sell, use and stock the product and (where the
grant relates to a process) to apply the process to the product.60 A grant of patent lapses
after twenty (20) years61 save for where the patent is relinquished62 or declared void by a
Court.63

Infringement

A Patent infringement is committed where a person other than the patentee, (in the case
of a patented product), makes, imports sells, uses such product, and (in the case of a
patented process), applies the process or imports, sells, makes or uses the product of the
process, without the licence of the patentee.

56
CA (1990) s24 LFN, 2004
57
F.O. Babafemi, ‘Intellectual Property: The Law and Practice of Copyrights, Trade Marks, Patents and
Industrial Designs in Nigeria’ (2006) Justinian Books Limited, 2006 342
58
A “Statutory Inventor” under the Act, is defined as “the person who, whether or not he is the true
inventor, is the first to file, or validly to claim a foreign priority for, a patent application in respect of the
invention.” See Section 2(1) of PDA
59
See Section 2(2) of the PDA.
60
See Section 6 of the PDA.
61
Templars, ‘Patentability under the Nigerian Patents and Designs Act (PDA):
An Introductory Analysis’ https://www.templars-law.com/wp-content/uploads/2015/05/Patentability-
Under-the-Nigerian-Patent-Act.pdf accessed 19 February 2021.
62
See PDA, s7 ss1 of the particularly s8 for conditions for the surrender of a Patent.
63
See s7 ss2, and 9 of the PDA respectively for the circumstances under which a patent will lapse or be
declared a nullity.

11
An actual infringement of the patent must occur before the cause of action can accrue.
However, where there is a threat of infringement, a patentee may apply to the Court for
a quia timet injunction, which prevents a threatened infringement of the patentee's right.64

The Patentee may seek redress of any infringement by applying to the Court in that
regard. The remedies available are those available under the infringement of copyright.

Defence

A Defendant to a claim for patent infringement may challenge the validity of a patent and
may also counterclaim requesting the Court to nullify such a patent.

It is also a defence to a patent infringement suit that the acts said to constitute the
infringement took place before the patent was granted, or that the defendant was granted
a licence by the patentee to exploit the patent (by the patentee, the Court, or the Minister
of Trade, Industry and Investments), or that the patent has expired or lapsed.65

A Defendant may be challenged on the ground that the subject of the patent is
unpatentable; the patent is not new, does not result from inventive activity and is not
capable of industrial application; the patent is in respect of a plant or animal variety or
biological process, or the application or exploitation of the patent is contrary to public
order or morality.66

When raising the invalidity of a patent as a defence, the defendant must ensure that the
patentee (not a mere licensee) is a party to the action. Thus, where a licensee sues a
defendant and the defendant intends to validly challenge the validity of the patent, the
defendant must apply to the Court for leave to have the patentee joined as a party to the
suit. Lack of knowledge is not a defence to a patent infringement claim.67

TRADEMARKS ACT,68

64
Fred Onuobia, Solomon Ezike; Ayodele Ashiata Kadiri, ‘The Patent Litigation Law Review: Nigeria’
(2020) Law Review Online
<https://thelawreviews.co.uk/title/the-patent-litigation-law-review/nigeria> accessed19 February 2021
65
Templars, ‘Patentability under the Nigerian Patents and Designs Act (PDA):
An Introductory Analysis’ <https://www.templars-law.com/wp-content/uploads/2015/05/Patentability-
Under-the-Nigerian-Patent-Act.pdf> accessed 19 February 2021.
66
ibid
67
ibid
68
Trade Marks Act, Cap. T13, Laws of the Federation of Nigeria 2004

12
The ownership of a registered trademark is conferred on the registered owner.
Section 5(1) of the Trademark Act specifically permits the exclusive right of a
proprietor to use the trademark with the goods it was registered under. It also confers
the right for enforcement when a third party infringes on the use of the mark.

Infringement of Trademarks

By the provisions of Section 5(2) TMA, a mark will be deemed to be infringed when
a person (who is not the by any person who not being the proprietor of the
trademark), “uses a mark identical to it or so nearly resembling it as it is likely to
deceive or cause confusion in the cause of the trade concerning any goods in
respect of which it was registered”.

The Supreme Court per Musdapher, JSC, in the case of Ferodo Ltd. v. Ibeto Ind.
Ltd69 gave an elaborate description of infringement under the Act thus:

“Following the provisions of section 5(2) of the Trade Marks Act,

an infringement of a registered trademark cannot be maintained
unless the court finds that the defendant is engaged in the use of a
mark identical with the registered trademark or uses a mark so
nearly resembling the registered trademark, as to be likely to
deceive or cause confusion in the course of trade; or uses with any
goods in respect of which it is registered, or uses in such a manner
as to render the use of the mark to be taken as importing a
reference to the goods which the plaintiff's trademark is
connected".70

It is worth stating that under Trademark, there can only be an infringement where an
identical or closely resembling mark is used on an identical product.

It is important to note that under the Trademark Act there can only be an
infringement if an identical or closely resembling mark is used on identical or closely
resembling goods. The only exception to this is where the mark is a well-known or
famous trademark and it will have to be via the discretion of the Registrar.

Enforcement
69
(2004) 5 NWLR (Pt. 866) 317
70
Ibid at Page 352 Para C - E

13
Upon registration, a trademark confers on the proprietor the right to sue or institute
an action for any infringement of the mark. The Registration also entitles the
proprietor to sue for passing off the goods. Unlike the under Copyright Act, the onus
is on the owner to prove the infringement of his mark. This is the position as held by
the Supreme Court per Tobi, JSC, in Ferodo Ltd. v. Ibeto Ind. Ltd71 stated that:

“By the combined effect of sections 136 and 137 of the Evidence Act,
the burden is on the appellants to prove that the trademark of the
respondent is an infringement of theirs and that the act of the
respondent amounted to a passing-off.”72

Enforcement of any infringed trademark can be affected by filing a suit at the Federal
High Court, which now has exclusive original jurisdiction over trademark matters. The
action can be for infringement of trademark and for passing off. Other possible avenues
for an avenue for enforcement can be through the Nigerian Trademarks, Patent and
Designs Registry73 and the Corporate Affairs Commission74

Defence for Infringement

The following grounds of defence may be raised:

• Bonafide use of a mark that is identical or similar to a registered trademark for a

continuous period predating the use or registration of the registered trademark by
the registered proprietor.

• Bonafide use by a person of his name or the name of his place of business or that
of his predecessor in title.

• Bonafide description of the type or quality of the alleged infringer’s goods.

71
Supra n28.
72
Ibid at 366 Para F - G
73
which has the power to refuse registration, power over opposition proceedings and powers of
rectification.
74
The CAC through the Registrar General of the Corporate Affairs Commission have the power to compel
a registered company to change its name if it finds that the company or business name is confusingly
similar to a prior registered trademark

14
 • Non-registration and/or invalidity of the claimant’s trademark; absence of a
likelihood of deception; where the streams of distribution or specification of
goods/services are distinct; and permitted user, consent or acquiescence.75

Thus, a proprietor of a registered mark aside from merely registering the mark must
ensure that there is adequate policing of the registered mark to protect against an
allegation of non-use that may lead to a loss of the mark. 76 This may be achieved by
Consistent and Frequent Monitoring against the incidence of double registration or
attempted registration “of a mark that is identical” to that already registered. This
will enable the proprietor to file an action where necessary.

It is important to note that failure to exercise the right where the right of enforcement
not utilised by the proprietor, there can lead to a weakening of the mark. This is as a
result of the fact that a charge of non-use can be alleged and used as a defence by a
third party and ultimately result in a loss of the registered trademark. 77

Trademark Malpractices (Miscellaneous Offences) Act Cap. T12 LFN 200478

The Act criminalises trademark-related offences like false labelling or packaging, sale,
the offering for sale or advertising of any product in a manner that is false or misleading
or is likely to create a wrong impression as to its quality, character, brand name, value,
composition, merit or safety.79 The Act provides a penalty of a fine of not less than
N50,000.00.

The Act establishes the Special Trade Malpractices Investigation Panel80 under the
Federal Ministry of Commerce to investigate whether or not an offence has been or is

75
The International Comparative Legal Guide, ‘Trade Marks 2017: A Practical Cross-border Insight Into
Trademark Work’ 6th Edition <http://www.spaajibade.com/resources/wp-
content/uploads/2017/05/TM17_Chapter-24_Nigeria.pdf> accessed 16 February 2021.
76
Bolanle Oluwo, ‘Nigeria: Protecting and Enforcing Trademarks and Copyrights’ (2007)
http://www.nigerianlawguru.com/articles/intellectual%20property%20law/PROTECTING%20AND%20E
NFORCING%20TRADEMARKS%20AND%20COPY%20RIGHTS.pdf > accessed 16 February 2021.
77
ibid
78
Cap T12 LRN 2004
79
ibid a1
80
The Panel is composed of a representative from the Ministry of Commerce, Ministry of Internal Affairs;
Ministry of Health; Ministry of Petroleum Resources; Ministry of Solid Mineral Development; Ministry of
Industry; Ministry of Science and Technology; Ministry of Finance; Central Bank of Nigeria; Standard
Organisation of Nigeria.

15
being committed under the Act.81

The Panel upon investigation will submit its report to the Attorney General of the
Federation, who, if in his opinion found that an offence has been committed under the
Act may institute proceedings against the person in the tribunal established the
Miscellaneous Offences Act.82

Merchandise Marks Act,83

The Merchandise Marks Act is the law regulating fraudulent marks on merchandise. The
Act criminalises the forging of a trademark or falsely applies goods to any trademark to
deceive the public.84

A person will be deemed to have forged a trademark if he makes the trademark or a mark
nearly resembling that mark with aim of deceiving. The actual falsification of a genuine
trademark by way of alteration, addition, effacement will also be amount to forging
without the consent of the proprietor of the mark.85

Penalty

The Act provides a penalty of a term of imprisonment of two years or a fine or both if an
offender is convicted by a High Court. It also provides imprisonment of six (6) month or
payment of fine on a summary conviction by a Magistrate. In either case, the offender is
liable to forfeiture of all articles, instruments, goods and chattel connected to the
offence.86

Defence

It will be a defence if the alleged offender can show that he acted innocently. He can also
show that he has no reason to suspect the genuineness of the trademark after taking
reasonable precaution against committing an offence under the Act. The fact that the
offender willingly and promptly released all the information at his disposal to the

81
TMMO s 2
82
ibid ss3 and 4
83
MMA, Cap. M10, LFN 2004
84
MMA, Cap. M10, LFN 2004 s3 sub-s1, paras (a) (b)
85
MMA, Cap. M10, LFN 2004 s4
86
MMA, Cap. M10, LFN 2004 s3 sub-s 3

16
prosecution promptly on demand is also an available defence87

Limitation to Prosecution

Surprisingly, the Act imposes a limitation to the prosecution of an offence under the Act.
Any offence committed under the Act must be commenced within three (3) years of the
commission of the offence or one year after the first discovery of it by the prosecutor,
whichever expired first. 88

Counterfeit and Fake Drugs and Unwholesome Processed Foods (Miscellaneous

Provisions) Act (CFDUPFA )89

This Act regulates the distribution of counterfeit, adulterated, banned or fake, substandard
or expired drug or unwholesome processed foods.

The Act defines ‘fake drug’ to where “anything accompanying the drug bears any
statement, design or device which makes a false claim for the drug or which is false or
misleading”.90

Section 1 of the Act provides that any person that produces, imports, manufactures, sells,
distributes, possesses or displays for sale any counterfeit, adulterated, banned, fake, sub-
standard or expired drug or unwholesome processed food in any form or aids or abets
another party to so do as committed an offence under the Act.

The Offence to tried by the Federal High Court and the punishments on conviction
include a fine of up to N500, 000.00 and imprisonment for between 5 and 15 years.91The
enforcement of this law is largely vested in NAFDAC, the Nigeria Police Force Squad
and the Pharmacists Board of Nigeria.

INSTITUTIONAL FRAMEWORK FOR THE ENFORCEMENT OF IPRs IN

NIGERIA.

Nigeria has established various regulatory agencies whose function is to coordinate and
administer activities relating to intellectual property including enforcement.

87
ibid
88
MMA, Cap. M10, LFN 2004 s13
89
CFDUPFA Cap C34 LFN 2010
90
ibid s12
91
ibid ss 3 and 4

17
THE COURT

The subject matter jurisdiction to hear IP cases is given under the Nigerian Constitution
exclusively to the Federal High Court. Section 251(1) of the Constitution92 provides that
Notwithstanding anything to the contrary contained in this Constitution, the Federal High
Court shall have and exercise exclusive jurisdiction to the exclusion of any other court in
civil causes and matter to copyright, patent, designs, trademarks and passing-off,
industrial designs and merchandise marks, business names, commercial and industrial
monopolies, combines and trusts, standards of goods and commodities and industrial
standards.93

The above provision is also substantially similar to the provisions of Section 7 of the
Federal High Court Act.94 The Supreme Court in Omina (Nig.) Ltd. v. Dykrade Ltd95
also confirmed the right position of the law; that the Federal High Court has jurisdiction
in action for infringement IPRs.

Further, in Section 251(3) of the Constitution, the Federal High Court also has and
exercises jurisdiction and powers over criminal causes and matters in respect of which
jurisdiction is conferred by subsection (1) of Section 251.96 The principal legislations of
Copyright, Trademark, Patents and Design all provided that the “Federal High Court”
has exclusive jurisdiction over matters relating to the enforcement of the provisions under
the Act.97 Therefore, by these provisions it can safely be concluded that only the Federal
High Court is bestowed with the jurisdiction to hear and determine causes and matters,
whether criminal or civil, relating to IP in Nigeria.

It is worthy of note that the expenses and complexity of the judicial enforcement of IPRs,
such as undue delay and a long time to fully determine a case, the quantum of damages
and the rigours of enforcement of the final court orders, has to make administrative
92
CFRN, 1999.
93
Section 251 (1) (f).
94
FHA Cap F12 LFN, 2004.
95
[2007] 15 NWLR (Nigerian Weekly Law Reports) (Pt.1058) 276 S.C.
96
See S. 7(2) of the Federal High Court Act which provides that "The Court shall also have and exercise
jurisdiction and powers in respect of criminal cases and matters arising out of or connected with any of the
matters in respect of which jurisdiction is conferred by subsection (1) of this section"
97
See Section 46 of the Copyright Act (CA) provides that “the Federal High Court shall have exclusive
jurisdiction for the trial of offences or disputes under this Act”. Section 67 of the Trademarks Act in
interpreting “court” as used under the Act states that “‘court’ means the Federal High Court”. The use of
the word “means” is restrictive and admits of no other court or further inclusion. Similarly, section 32 of
the Nigerian Patents and Designs Act defines court to mean the Federal High Court.

18
remedies are a less expensive solution and more attractive alternative way of enforcement
of IPRs. As a result, IPR owners have become more interested in adopting the regulatory
approach.

THE NIGERIA COPYRIGHT COMMISSION

The Nigeria Copyright Commission (“NCC”) is established under the Copyright Act it
is responsible for matters relating to or connected with copyright in Nigeria. 98

By the provision of the Act, the Commission (NCC) is clearly and explicitly empowered
to fight and curb piracy in Nigeria. The Act empowers the commission to appoint
Copyright Inspectors (CI)99 with the power to enter and inspect any premises, which is
reasonably suspected, is being used for any activity which is an infringement of copyright
under this Act. The powers of the CI include the arrest and investigation of any person or
work, which infringes the provisions of the Act. 100 The Commission also carrying out
raids and seizing items that are pirated, prosecuting perpetrators and convicting them
with copyright infringement.101

Since its establishment in 1989 102 , the NCC through its, enforcement unit has
successfully prosecuted cases of infringement of copyright and also done a lot of
campaigns and sensitization to reduce the cases of infringement. 103 The Prosecution

98
The Commission (NCC) has zonal offices in some states of the Federation for decentralised
administration of copyright matters. It is headed by a Director-General, who is responsible for the day-to-
day administration of NCC. A governing board is established for the Commission for the effective
management of NCC. The Commission has numerous functions/roles provided under the Copyright Act.
See Section 34 of the Copyright Act.
99
Section 38 of the Copyright Act
100
Section 38(5) of the Copyright Act
101
M. I. O. Nwogu,‘The Challenges Of The Nigerian Copyright Commission (NCC) In The Fight Against
Copyright Piracy In Nigeria’ (2014) Global Journal of Politics and Law Research Vol.2, No.5, pp.22-34
<http://www.eajournals.org/wp-content/uploads/The-Challenges-Of-The-Nigerian-Copyright-Commission-
Ncc-In-The-Fight-Against-Copyright-Piracy-In-Nigeria.pdf> accessed 19th February 2021.
102
Following the implementation of Decree No. 47 of 1988
103
In 2005 the NCC carried out a campaign called the Strategic Actions Against Piracy (STRAP) and the
Copyright Litigation and Mediation Programme (CLAMP). In 2012 the Commission re-strategised the
STRAP into what is now called a Medium Term Corporate Plan and Strategy (MTCPS) with the aim of
harnessing the creative genius of Nigerians for national development and global influence through
dissemination of copyright knowledge, effective rights administration and protection of rights. See NCC
2012 Annual Report. (2012) p3 where it mentions the vision, mission and strategies of the Commission.

19
Department of the Nigerian Copyright Commission (NCC) has also successfully
prosecuted several cases of infringement of copyright in Nigeria104

TRADEMARKS, PATENT AND DESIGNS REGISTRY

The Trademarks, Patents and Designs Registry oversee the administration of Industrial
Property in Nigeria. It is an arm of the Commercial Law Department under the Ministry
of Trade and Investment.105

The Trademark Registration System in Nigeria provides numerous opportunities for

applications to be challenged before and after registration. The Trademark Registry will
refuse registration to any trademarks it deems confusingly similar to the trademark. This
measure is aimed at enforcing the rights of existing registered proprietors.

OTHER AGENCIES OF GOVERNMENT

There are other government regulatory agencies that have functions, which greatly impact
IP, and they can be used to enforce IP rights indirectly.106 Such regulatory agencies
include the National Agency for Food and Drug Administration and Control, the
Nigerian Customs Service, the Nigerian Police, and the Nigerian Intellectual
Property Office.

While the main statutory functions of these government agencies are not to regulate or
enforce IPR, they have nevertheless proven to be an effective, indirect way to curb the
menace of illicit trade in counterfeit goods. Thus, in addition to civil and criminal court
actions that are available to IPRs owners, to redress the breach of his IPRs, the IPR owner
may resort to these agencies to enforce his IPRs.

THE NATIONAL AGENCY FOR FOOD AND DRUG ADMINISTRATION AND

CONTROL

The National Agency for Food and Drug Administration and Control (“NAFDAC”) is a
body corporate established by the NAFDAC Act.107 The body is empowered under the

104
Kunle Ola ‘Evolution and future trends of copyright in Nigeria’ (2014)
<https://ojs.law.cornell.edu/index.php/joal/article/view/26/38> 19 February, 2021
105
IPONigeria, ‘About us’ <http://www.iponigeria.com/AboutUs > 19 February, 2021.
106
Obafemi Agaba, ‘Filling the Vacuum of Intellectual Property Rights Regulatory Enforcement: Nigerian
Customs Service to the Rescue’ Business Day (Nigeria, May 14, 2009)
107
National Agency for Food and Drug Administration and Control Act (1993) Cap. (N1), Laws of the
Federation of Nigeria, 2004.

20
Act to regulate and control the importation, exportation, manufacture, advertisement,
distribution, sale and use of food, drugs, cosmetics, medical devices, packaged water and
chemicals, generally known as regulated products.108

Concerning the above duties, NAFDAC has policies and guideline, which ensure the
registration of the products under the sphere of the Agency.109 The provisions of various
regulations and guidelines require the submission of evidence of ownership of
trademark as a condition precedent for the registration of branded regulated
products.110

Where an infringed trademark is used in respect of a product that is within the purview of
NAFDAC powers, a petition can be presented to NAFDAC in that respect. 111 The
NAFDAC Enforcement Directorate has a police squad responsible for ensuring that its
regulations and guidelines are adhered to, as part of the overall. The Federal Government,
has in the past, given the directive to the NAFDAC to deregister all products registered
under the trademarks of foreign manufacturers without their consent. Sequel to this
directive, NAFDAC, acting on the petitions sent by local attorneys on behalf of their
clients, de-registered several products registered for local companies.112

NIGERIAN CUSTOMS SERVICE

The Nigerian Customs Services (NCS) is established under the Customs and Excise
Management Act. The NCS is principally the “gatekeeper” of the Nigerian borders and
economy. It is the agency in charge of all goods entering, transiting and leaving the

108
NAFDAC Act s1
109
NAFDAC Guidelines can be found at https://www.nafdac.gov.ng/resources/guidelines/ accessed on 19th
February, 2021.
110
Lisa McIlwaine-Hill ; Vicky Stilwell ‘Consumer Brands Beware: NAFDAC And Trade Marks In
Nigeria’ (2017) <https://www.mondaq.com/nigeria/trademark/636344/consumer-brands-beware-nafdac-
and-trade-marks-in-nigeria> accessed 19 February, 2021
111
Dora Akuyili, ‘Consideration Of Intellectual Property Rights In Regulation And Control: Activities Of
The National Agency For Food And Drug Administration And Control (NAFDAC)’ (2006) WIPO
Advisory Committee On Enforcement.
<https://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ace_3/wipo_ace_3_9.pdf> accessed 19
February, 2021.
112
Bunmi Binitie; Temitope Coker, ‘Nigeria: The (Unwitting) role of the NAFDAC in the protection of
trade marks rights’ <https://www.lexology.com/library/detail.aspx?g=8a5e6a9f-9dff-4509-a9ac-
500066484ccf> accessed 19 February, 2021.

21
country through the international borders113 As a result, its role in combating smuggling
and more specifically counterfeiting, can never be overemphasized.114

Before, the powers of the Nigerian Customs were limited to the collection of duties and
ensuring that goods on the prohibition list did not find their way into the country.

Infringers often take their illegal reproduction activities off he shores and Nigeria for
cheap reproduction cost and import into Nigeria. This posed a limitation to brand owners
in engaging the customs in fighting counterfeits from the strategic entry points into the
country.

However, with Nigeria signing the Common and External Act of Economic
Community of West Africa (ECOWAS), the Service expanded its activities to seizures
of counterfeited/pirated materials. Schedule 4 (Item 3) of the ECOWAS Common and
External Tariff prohibits the importation of ‘all counterfeited/pirated materials or
articles including base or counterfeit coin of any country.’115

Also, Section 46 (e) and (f) of the CEM Act provides that any imported goods are
concealed or packed in any manner appearing to be intended to deceive or not to
correspond with the entry made thereof shall be forfeited. Section 47 of the Customs
and Excise Management Act provides that any person found to have engaged in such
improper importation of goods and allied offences as stated in Section 46 shall be
sentenced to a term of imprisonment for five (5) years without the option of fine.

The combined effect of the provisions of the Common External Tariff and the CEM
Act is that customs can enforce and combat IPRs infringements from the ports of entry to
the warehouses and indeed the markets.116 This is in line with the TRIPS Agreement,

113
Customs and Excise Management Act (1959) Cap. (C45), Laws of the Federation of Nigeria, 2004.
114
Nnenna Ugo Awa, ‘Building respect for IP: Nigeria Customs Service on the frontline’ (2018) WIPO
Magazine <https://www.wipo.int/wipo_magazine/en/2018/si/article_0002.html> accessed on 19th February,
2021
115
CET Tariff <https://customs.gov.ng/?page_id=3133> accesed 14th February, 2021.
116
Nnenna Ugo Awa, ‘Building respect for IP: Nigeria Customs Service on the frontline’ (2018) WIPO
Magazine <https://www.wipo.int/wipo_magazine/en/2018/si/article_0002.html> accessed 19 February,
2021

22
which recommends that member states examine their various borders to seize infringing
products at the borders.117

The implication is that all categories of counterfeit goods are now prohibited from being
imported into the country, and would be subject to all the powers, which the customs
service has over such products under the Customs and Excise Management Act.118

THE NIGERIAN POLICE

The Nigerian Police is a creation of the Constitution by Section 214(1) Constitution.

The duties, functions and powers of the Police are set out under the Nigerian Police
(Establishment) Act 2020. Section 4 of the Police Act provides for the general duties of
the police, to include: “the prevention and detection of crime, the apprehension of
offenders, the preservation of law and order, the protection of life and property and the
due enforcement of all laws and regulations with which they are directly charged, and
shall perform such military duties within or outside Nigeria as may be required of them
by, or under the authority of this or any other Act.”119

From the foregoing provisions, it can be deduced that the Nigerian Police play an active
role in the enforcement of IPRs in Nigeria. Police raids are conducted under the
Merchandise Marks Act, which makes it an offence to falsely apply a trademark to goods
not belonging to the true proprietor.

STANDARD ORGANIZATION OF NIGERIA (SON)

The SON is a body charged with the responsibility of designating, establishing and
approving standards for products and processes, and ensuring compliance with the
government’s policies on Standards, Metrology and Quality assurance of products
throughout Nigeria. The organization’s major preoccupation is ensuring that products in
Nigeria conform to standards, quality and design. Although the SON is not directly
saddled with the enforcement of IPRs in Nigeria

117
According to Article 51 of the TRIP Agreement, the goods which must be subject to border enforcement
procedures must include at least counterfeit trademark and pirated copyright goods that are being presented
for importation
118
See Section 4 of the Customs and Excise Management Act Cap. (C45), Laws of the Federation of
Nigeria, 2004.
119
Section 4 of the Nigerian Police (Establishment) Act 2020.

23
CONSUMER PROTECTION COUNCIL (CPC)

The CPC is saddled with the responsibility of ensuring that consumers get what they
bargain for from manufacturers and importers; and that consumers are not deceived as to
the nature, quality or origin of the products they have purchased

PROVISIONS RELATING TO ENFORCEMENT IN IPR BILLS BEFORE THE

NATIONAL ASSEMBLY

COPYRIGHT BILL

Exceptions To Copyright Control

The Bill bring feature or yard sticks for if a particular use of a work with be considered as
fair not. These include the nature of the work; the extent and scope of the adaptation of
the work; the effect of the use on the economic value of the original work as well as
whether or not the will conflict wih the interest of the original owner of the work.120

Aiding And Procuring Copyright Offences

The Bill introduces the secondary offence of aiding and procuring to wit: A person who
aids or assist another person to commit an offence under the Bill will be guilty of an
offence and liable as the primary offender for the main offence.121

Protecting of IPRs on the Internet

The Bill also make provisions for the protection of works in the intermet media space.
Some of the provision include the procedure for addressing any infringing content on the
internet.

Where an infringing work is found on internet, the owner of a work will request an
Internet Service Provider (ISP) to takedown or block public access to such content. 122
The ISP will contact the affected subscriber, who is expected to justify the continuous use
of the work within 10 days, failing which the offending content will be taken down.

120
Oluwafunmilayo Mayowa, ‘A Brief Review of the Nigerian Draft Copyright Bill 2015’ (2019)
<https://www.globallawexperts.com/NewsArticle.aspx?PID=1967> accessed 19 February, 2021.
121
Section 38 of the Copyright Bill
122
Section 47. of the Copyright Bill. Note similar provisions contained in the earlier Nigerian
Communications Commission. See the ‘’Guidelines for the provision of Internet Services” published
pursuant to Section 70(2) of the Nigerian Communications Act 2003, <https://www.ncc.gov.ng/docman-
main/legal-regulatory/guidelines/62-guidelines-for-the-provision-of-internet-service/file> accessed 18
February, 2021.

24
However, where the affect subscriber provides satisfactory evidence, the ISP will notify
the owner without taking down the content.

Other provisions relates to the powers of an ISP to suspend the account of an alleged
repeat infringer for a period of one month. Such power is only exercisable after the ISP
have giving a notice (warning) to the affect infinger, who may challenge the notice. 123
The Commission is also empowered to block or disable access to any content if in its
opinion infringes on the copyright of any person. 124

Establishment Of A Dispute Resolution Panel

The Bill empowers the NCC with the discretion to establish a dispute resolution charged
with the task of resolving in matter covered by the Commission for example issues of
royalty or licenses etc. The Dispute resolution panel has be made up of three person with
vast knowledge in intellectual property. An appeal against the decision of the panel will
lie to the Federal High Court.125

THE TRADEMARK BILL

Recognition of Use of Trademarks over the Internet:

In response to the impact of emerging technologies and the pliability and universal nature
of the World Wide Web, Section 48 of the Trade Mark Bill recognizes that use of a
sign/symbol on the internet shall constitute use in Nigeria, ‘only if the use has a
commercial effect in Nigeria’. The extant Trade Marks Act does not recognize the use of
marks over the internet as proper use thereof. Although the recognition of such trademark
use should be implied under existing law, and evidence of which could also constitute
proof of publicity and advertising efforts, specific statutory provisions are more desirable.

INDUSTRIAL PROPERTY COMMISSION (IPCOM) BILL:

The IPCOM Bill still before, seeks to harmonize the Intellectual Property laws, which are
the Trade Marks Act cap. T13, LFN 2004 and the Patents and Designs Act, cap 344, LFN
2004; to provide a comprehensive legislative Intellectual Property framework, is yet to be

123
Section 48 of the Bill
124
Section 54 of the Bill
125
Section 76. See also the Copyright (Dispute Resolution Panel) Rules 2007 contained in the Second
Schedule of the Copyright Collective Management Organisations) Regulations 2007. The Rules outlines
detailed provisions on commencement of proceedings, the constitution of the panel etc.

25
passed into law. The essential of the Bill (as it relates to enforcement of IPRs) provides
for the establishment of a separate and autonomous administrative agency i.e. Industrial
Property Commission of Nigeria for trademark matters. The part of the function of the
Commission will be for proper enforcement of industrial property rights; monitor and
supervise Nigeria's position International standards. It also stipulates higher penalties and
fines for infringement of trademarks.

Nigeria has a legal regime that portends to curb, or at least reduce, the incidents of
infringement and counterfeiting and it has only the barest minimum of effects, and more
still needs to be done to ensure effective enforcement and stay in tune with the best
international practices

CHALLENGES

IPRs infringements have for so long remain a major problem in Nigeria due to the weak
enforcement of their intellectual property law and adequate awareness of the extent of the
right conferred by IP.

Lack of Public Awareness:

There is little public awareness or understanding of the intellectual property laws in

Nigeria. Existing laws and rights conferred by them are not readily accessible even to the
right holders. The average man on the street is also ignorant of the benefits of intellectual
property protection.

Unrefined Laws:

The dates of enactment of principal legislation relating to IPRs in Nigeria indicate that
laws do align with the current day developments. The implication of the continuous use
of these outmoded legislation is that the IPRs protection and enforcement mechanism
offered in Nigeria is insufficient in comparison to the updated laws now operating in
other jurisdictions. 126 The extant laws fail to contemplate new developments and
innovations in industrial property, and therefore do not provide means for protection in
that regard127

126
Adetola Adeleye, ‘Intellectual Property Rights Enforcement In Nigeria: Regulatory Agencies To The
Rescue’ (2016) <https://pennjil.com/intellectual-property-rights-enforcement-in-nigeria-regulatory-
agencies-to-the-rescue/ > 19 February, 2021
127
ibid

26
Inefficient Enforcement System.

IP Law Reforms may not achieve targeted results in protecting IPR holders, except the
mechanism for enforcing the law is equally enhanced. The Enforcement Units of
regulatory agencies need to be more empowered to carry out their surveillance, policing
and investigation functions. In most case, these units made of rank and file of officers
with insufficient finance and obsolete equipment and lack of up-to-date skills in the use
of modern technologies in combating IPR infringement to achieving desired results.128

Institutional Challenges

There are institutional problems or administrative bottlenecks within IP regulatory

institutions which affects the effective enforcement regimes of IPRs these include but not
limited to: Corruption; lack of or inadequate funding; inadequate operational space;
insider abuse; lack of well-trained personnel; lack of or improper data, records or
database.129

The unwillingness of right holders

There is a handful level of the unwillingness of right holder to either partner with
enforcement agencies on IP enforcement. This is largely due to the fact that most right
holders either considers the infringement of their work has an advantage to them or do
not want to be a target with activities that will “affect their FAN base”.

Judicial System

Delays in the judicial system and other barriers to justice also discourage intellectual
property litigation and enforcement in Nigeria.

Also, the outcome of those few cases leaves much to be desired. The quantum of
damages often awarded by the courts are not encouraging. For example in the case of
Beecham Group Limited v Esdee Food Product Nigeria Limited.130 The learned judge
upon finding that the defendants product “GLUCOS-AID” infringes on the Plaintiff
trademark of “LOCOZDE” awarded a mere N5, 000.00 as damages even though the

128
Adekola Tolulope Anthony; Otekunrin Adegbola, “Nigerian Entreprenuers And Their Intellectual
Properties – A Perspective View” Reasrchgate
<https://www.researchgate.net/publication/321365282_Nigeria_Entrepreneurs_and_their_intellectual_prop
erties-_a_perspective_view> accessed19th February, 2021
129
ibid
130
(1999) FHCLR 477.

27
plaintiff had pleaded five hundred thousand naira N500, 000.00 In Masterpiece Invest
Limited and Anor v WorldWide Business Media Limited and Ors131 the court awarded
N60, 000.00 to the plaintiff for infringement of his unregistered copyright in a literary
work.

The above shows that there is a need to developed the Nigerian jurisprudence in IP and
ensures that competent judges skilled in IP laws are appointed to the Courts with Federal
High Court, which is the court exclusive jurisdiction over IP matters in Nigeria.

Lack of Public Consultation

Essentially, the Copyright Act and the Trademarks Act, which are the primary legislative
tool for copyright and trademark protection in Nigeria today, were adopted without
broad-based public discussion on the necessity for copyright and trademark protection or
the scope of protection that was desirable. This is contrary to Paragraph 9 of the
Adelphi Charter on Creativity, Innovation and Intellectual Property, which states
that in making decisions about intellectual property laws, "there should be wide public
consultation." 132

CONCLUSION AND RECOMMENDATION

Despite the various efforts made at strengthening IP rights and protection in Nigeria, IP
infringement remains and is on the increase. One of the most debated issues in IPRs
enforcement in Nigeria is the infringement in cyberspace. Although the Copyright Bill
has incorporated some enforcement measure regarding internet infringements. There is a
need for more dynamic legislation to address the rapid development in the technology
space. Oyewunmi, (2011) have canvassed specific provisions that would address digital
transmissions, online interactive distributions and communications to the public via
cyberspace and other digital platforms in recognition and implementation of the WIPO
Internet treaties.133 Such specific legislation will ensure that the IPRs administration
keeps tab with technology development and not piecemeal and lethargic legislative
response.

131
(1997) FHCLR 496
132
Ofodile, E. U., ‘Nigerian Entertainment Industry and Piracy’ (2010) Nigeria Film.com
https://www.nigeriafilms.com/sports/6095-nigerian-entertainment-industry-and-piracy accessed 14th
February, 2021.
133
Adejoke Oyewunmi, ‘Towards Sustainable Development of Nigeria’s Entertainment Industry in the
Digital Age: Role of Copyright Law and Administration’ (November 2011), NJIP pp. 95-99.

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 To address the slow judicial system and poor appreciation of the unique nuances of
intellectual property law and practice, it is recommended that there should be special
Rules of Procedure that will govern the IPRs litigation proceedings like what is
obtainable under Fundamental Right Enforcement, Admiralty and AMCOM Proceedings.

There is a need for more extensive teaching of the subject in our schools, proper training
of judicial and reviewing authorities and the proper regulation of piracy through
extensive enlightenment programs by rights-holders, the government and stakeholders.134

The IPR Enforcement Officers should be properly trained and equipped in handling and
deployment of adequate resources for proper functioning particularly in obtaining
preserving electronic evidence. Also there should appropriate border control measures
and collaboration between affected agencies and parastatals would be of immense value
in combating piracy of copyrighted works.135

134
John Onyido, ‘Copyright in the Digital Age: Keynote address at the University of Ilorin Intellectual
Property Summit 2019’ (2019) <http://www.spaajibade.com/resources/copyright-in-the-digital-age-
keynote-address-at-the-university-of-ilorin-intellectual-property-summit-2019-john-onyido/#_ftn46>
accessed on 19th February, 2021.
135
ibid

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