Legal & Regulatory > Nigeria > Patents & Trademarks

Want to know more about patents & trademarks in Nigerian Pharma? Read on! Prepared in association with Olaniwun Ajayi LP, a leading law firm in Nigeria, this is an extract from The Pharma Legal Handbook: Nigeria, available to purchase here for USD 99.

1. What are the basic requirements to obtain patent and trademark protection?

Patents and Trademarks are afforded Intellectual Property (IP) protection under Nigerian law. IP as defined by the World Intellectual Property Organization (WIPO) refers to the creations of the mind: inventions; literary and artistic works; symbols, names and images used in the course of commerce.
Patents are regulated by the Patents and Designs Act 1970, whilst protection of trademarks is regulated by the Trademarks Act Cap T13 LFN 2004 (TMA) and Trademark Regulations 1990.

Patent Protection

Patents are generally exclusive rights over an invention, which provide the patent owner with protection for their inventions.

For an invention to be patentable in Nigeria, such invention must (i) be new; (ii) result from inventive activity; and (iii) be capable of industrial application (Section 1 of the Patent and Designs Act)

The right to registration of a patent is vested in the statutory inventor i.e. the person who, whether or not he is the true inventor, is the first to file an application for the grant of the patent or design. However, where the essential elements of an application for registration and the filing of the application had been obtained without the consent of the true inventor/creator, all rights in the application and any consequent registration shall be deemed transferred to the true inventor/creator. Further, where the statutory inventor/creator files for registration, then the true inventor/creator is entitled to be named as such in the register, and this entitlement may not be modified by contract.

Every application for a patent shall made to the Registrar of Patents and Designs and shall contain the following:

• the applicant’s full name and address and, if that address is outside Nigeria, an address for service in Nigeria;
• a description of the relevant invention with any appropriate plans and drawings;
• a claim or claims;

It shall be accompanied by the following supporting documents:

• the prescribed fees;
• where appropriate, a declaration signed by the true inventor requesting that he be mentioned as such in the patent and giving his name and address; and
• if the application is made by an agent, a signed power of attorney.

Trademark Protection

Section 67 of the TMA defined a trademark as ‘a mark used or proposed to be used in relation to goods for the purpose of indicating, … a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark’

The mode of registering a trademark in Nigeria is in writing (S18 of the TMA). For a trademark to be registrable in Nigeria it must contain at least one of the following essential particulars:

• the name of a company, individual, or firm, represented in a special or particular manner;
• the signature of the applicant for registration or some predecessor in his business;
• an invented word or invented words;
• a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
• any other distinctive mark:

The following documents or information are required for the filing an application registration of a trademark:

• Power of Attorney (Form 1) – applicable where a trademark agent is submitting the application on behalf of the applicant.
• Application for trademark registration Form 2 – This is to be dated and signed by the applicant (s) or his/her duly authorized agent.
• Bromides – specimens or exact representation of the marks to be filed.

2. What agencies or bodies regulate patents and trademarks?

Patents and Trademarks are regulated in Nigeria by the Trademarks, Patents And Designs Registry.

3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?

Patents Capable of Protection

In terms of the Patents and Designs Act, Section 1 provides that an “invention” is patentable if

• it is new, results from inventive activity and is capable of industrial application; or
• it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.

It is noteworthy that an invention is capable of industrial application when if it can be manufactured or used in any kind of industry, including agriculture (S2(c) of the Patents and Designs Act.

List of Exclusions from Patentability

Section 4(1) of the Patents and Designs Act expressly provides that patents cannot be validly obtained in respect of the following:

• plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products); or
• inventions the publication or exploitation of which would be contrary to public order or morality (It should be noted that the exploitation of an invention would not be held to be contrary to public order or morality merely because its exploitation is prohibited by law)
• principles and discoveries of a scientific nature as they are not inventions for the purposes of the Patent and Designs Act.

Trademarks which can be Protected.

Certain Trademarks can be protected depending on whether or not they adhere to the requirement of distinctiveness. To qualify for registration (and thus protection) under the Trademarks Act, a trademark must be capable of distinguishing the goods or services in relation to which it is used, or proposed to be used, from the same or similar goods or services of others.

A trademark will only fulfil this requirement if, at the date of application for registration it is inherently capable of distinguishing the goods or services in question or if, because of its prior use, it is capable of so distinguishing the goods or services.

4. How can patents and trademarks be revoked?

Grounds for Revocation of Trademarks

• Non-use – This situation occurs where the trademark was registered with- out any bona fide intention by the applicant to use same and there has in fact been no bona fide use of the trademark up to one month before the date of the application; or that up to one month before the date of the application, the trademark has not been used for a continuous period of at least five years.
• Contravention or failure to observe a condition precedent entered on the register in relation to a trade mark.
• Non-renewal: Failure to renew an expired trade mark registration.
• Lack of distinctiveness: Where it is alleged that the mark is descriptive or generic and was registered in error, is deceptive, confusing and or misleading.

Grounds for Revocation of a Patent

Revocation can be achieved through an application in the prescribed form on specific grounds only:

• where the subject of the patent is not patentable under the requirements of the Patents and Designs Act;
• The manner in which the invention is to be carried out by a person skilled to do so, is not fully described, ascertained and illustrated or exemplified (where necessary) in the complete specification of the patent application;
• if for the same invention a patent has been granted in Nigeria as the result of a prior application or an application benefiting from an earlier foreign priority.

5. Are foreign patents and trademarks recognized and, if so, under what circumstances?

Trademarks

Section 44 of the Trademarks Act provides that an application may be made in Nigeria, claiming priority on the basis of an earlier mark filed in a Convention country.

The application is made in the same manner as an ordinary application with the certified copies of the earlier trademark application on the basis of which priority is being claimed attached thereto. The Nigerian application must be filed within 6 months of filing the foreign application.

Although the necessary executive order that would specify countries to be recognised in Nigeria as Convention countries in Nigeria is yet to be made, the Trademarks Registry, in practice, accepts applications for foreign priority.

Patents

In cases where a patent application has been filed abroad, Section 27 of Patents and Designs Act provides that the filing date in the country of first filing will provide the applicant or his successor in title, with the right to file a patent application in any number of contracting states within twelve months of the date of filing the first application. The later filed application will enjoy a priority status as if the later filed application had been filed on the same date as the first application.

6. Are there any non-patent/ trademark barriers to competition to protect medicines or devices?

Generally, intellectual property right protection (including patent and trademark) grants the holder the exclusive protection of the creation so that, third parties cannot use the creation without the permission of the creator, usually granted through a license for a fee, with the creator keeping the exclusive rights over the creation. This in itself, exudes monopoly and creates a barrier to competition, as it creates an artificial market limitation or shortage in the market for technology that embodies claims of the patent. Artificial limitations to the market allow the patent owner to raise prices higher than the market clearing price, providing the patent owner with abnormal profits.

Beyond intellectual property protection, Nigerian law does not favour monopoly situations relating to the production or distribution of goods or services of any description within the economy and thus Section 76 of Federal Competition and Consumer Protection Act 2018 (the Act) empowers Federal Competition and Consumer Protection Commission (the Commission) in Nigeria to investigate cases of perceived monopoly. The Commission may refer its findings to the Tribunal established under the Act, which may, on the basis of the Commission’s finding, mete out penalties to entities in deserving instances.

Therefore, in Nigeria, barriers to competition which may be aimed at protecting medicine or medical device are more likely to trigger regulatory intervention.

7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?

List of Exclusions from Patentability

Section 4(1) of the Patents and Designs Act expressly provides that patents cannot be validly obtained in respect of the following:

• plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products); or
• inventions the publication or exploitation of which would be contrary to public order or morality (It should be noted that the exploitation of an invention is not contrary to public order or morality merely because its exploitation is prohibited by law)
• Principles and discoveries of a scientific nature as they are not inventions for the purposes of the Patent and Designs Act.

List of Exclusions from Registering of a Trademark

The following cannot be registered as a trademark in Nigeria:

• a mark that is not distinctive i.e. it does not meet the requirements stipulated by law regarding distinctiveness
• that it is deceptive or scandalous, contrary to law or morality or in any way disentitled to protection;
• a mark that contains some prohibited words and/or symbols such as names of chemical substances, use of the Coat of Arms of Nigeria, use of any emblem or title such as President or Governor without the appropriate authority

8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?

A license refers to the relationship between the proprietor of a trademark and the entity authorised by the proprietor to use that trademark in relation to goods manufactured and sold or in respect of the services rendered.

Section 33 of the TMA provides for the registration of any person other than the proprietor of the mark as a registered user in respect of all or any of the goods in respect of which it is registered.

Section 34 of the TMA confirms that an application must be brought by the proprietor and proposed registered user on Form 47 accompanied with a statutory declaration made by the proprietor (or some person authorized to act on his behalf) for the registration of the registered user. The proprietor and registered user may also be required to furnish the Registrar with such further documents, information, or evidence as may be required by the Registrar for the registration.

It can therefore be inferred that a trademark license agreement, whether it is with a foreign licensor or not, may be required by the Registrar for confirmation of approved usage and updating of the of the Registry’s file.