By Temiloluwa Olowoyo
- INTRODUCTION;
The Business Facilitation Act, 2023, also known as the omnibus bill was signed into law as part of the legislative intervention by the Presidential Enabling Business Environment Council, PEBEC, to help promote the ease of doing business as well as maximizing the standard of delivery of services of Ministries, Departments and Agencies (MDAs) in Nigeria. The Act amends 21 business-related laws in Nigeria by removing the administrative bottlenecks and red-tapism which the delivery of services of the MDAs is fraught with and invariably affecting not just the overall performances of these sectors but also has resultant effects on startups and business owners who would have to go through these MDAs in order to be fully legal to be operational in Nigeria.
One of the laws the Business Facilitation Act 2023 has amended is the Trademark’s Act 1965 and beyond mere amendments are certain provisions that deals directly with the Ministry housing the Trademark Registry, the Ministry of Industry, Trade and Investment, as it tends to regulate and to a considerable extent input some level of certainty, effectiveness and efficiency in the operations of the registry thereby translating into a seamless and ascertained mode of operations within the ministry, reasons for this are not far-fetched as trademarks encompasses the outlook of businesses when it comes to the uniqueness and the distinguishing qualities certain goods and services providers are known for. It is therefore a no brainer to have the trademark’s act as one of the business related laws that is affected by the enactment of the Business Facilitation Act, 2023.
In this article the full effect of the Act on trademark registration in Nigeria will be addressed as well as highlighting the long desired potential developments it will have on trademarks administration generally in Nigeria.
- THE TRADEMARKS ACT OF 1965.
The Trademarks Act is administered by the Trademarks registry, commercial law department, Federal Ministry of Industry, Trade and Investment, the registry is in charge of receiving applications and issuing the certificate of registration upon conducting the necessary search and processes. The stages for trademark registration can be summarized into; availability and clearance stage, application filing stage, publication stage and certification stage. The requirements for trademark registration are stated under the registrability and validity of registration section of the act[1], which will then culminate into sections 17-22 of the act that deals mainly with the registration procedures for trademark application.
It is essential to note that there exist some levels of disparities between the provisions of the sections stated above which when the Business Facilitation Act comes into force will address and correct. Currently in Nigeria, there is no statutorily fixed time for the registration of trademarks in Nigeria, which then leaves the processes to the whims and caprices of the registry or the registrar. As earlier stated, the stages of registration are stated above and there is no defined period of time which registration takes, going by the provision of section 17 which borders on preliminary advice on distinctiveness, the registrar is under no duty to as soon as possible avail the applicant with the result of the search, even though this particular section is not mandatory, it should be noted that applying for the preliminary advice will save business owners the time and resources of seeking to register a trademark that may not be registrable because it lacks the distinctive qualities a trademark should have, expressly provided in sections 9 and 10 of the act or for some other statutorily recognized reasons.
In 2013[2], the trademarks registry came up with an online search system where applicant can easily browse through to check the availability of trademark for registration, however, it was noted that even the online search is still subjected to a manual search conducted by the registry because the online search system is not comprehensive, reliable or accurate enough.
Going by the provisions of section 18 through 22 of the act[3], the gamut of the duties and powers of the registrar are not time constrained, an example is section 19 which provides for the publication of an accepted trademark, giving the public or an interested individual an opportunity to oppose the registration of the trademark on the grounds that may make a mark non-registrable; “that the registrar shall as soon as maybe after acceptance cause notice of the application as accepted to be published in the journal”, it therefore appears that even though the registrar is mandated to publish such accepted application, the time frame for such to be done is not ascertained, thus leaving business owners who have applied to the registry to wait indefinitely to have their marks registered, this singular act is enough to discourage applicants to pursue their application at the registry. With publication of journal being an essential part of the registration process, there should therefore be a defined period in which such publication should be made.
A commendable provision, however, which seems to put a time frame for trademarks registration is that of section 22(4) of the trademarks Act, which provides that where a registration is not completed within 12months, as a result of default on the part of the applicant, the registrar shall treat the application as abandoned. Looking deeply into this section, default of completion is only placed at the instance of the applicant and not at that of the registrar or the registry which is often the case in Nigeria. Generally, the Trademarks act has subjected the registration of marks to the convenience of the registry when it comes to how long a registration should take. Registration of trademarks in Nigeria is fraught with tardiness, making longer a process which ought to be facilitated in order to promote the economic activities in the country.
It needs to be pointed out that the Trademarks Act has been in existence for over 50years and it cannot be over emphasized that some of the provisions of the act cannot effectively capture the recent trends in the word of intellectual property. Trademark, being an essential part of any business that is set to thrive on its uniqueness and distinctive qualities, has evolved over the years, a new class of marks known as the non-conventional trademarks has come into place, such as smell marks, sound marks, holographic marks etc., all these are lacking as part of the provisions that the trademarks act should cover. In another part of this article, necessary recommendations needed to reface the trademark administration system in Nigeria will be made.
- THE BUSINESS FACILITATION ACT OF 2023 AND THE TRADEMARKS ACT.
As earlier stated, the BFA 2023 amended some business related laws in Nigeria with the overall aim and objective of creating a conducive environment for Micro, Small and Medium sized enterprises (MSMES)[4] to thrive in Nigeria by eliminating administrative bottlenecks by tasking MDAs to fulfill some transparency requirements set out in its sections.
By the express provision of section 3(1) of the BFA, ministries, departments and agencies of the Federal Republic of Nigeria which provide products and services shall publish a complete list of requirements to obtain the products and services. Going further in section 3(2), the products and services include permits, licenses, waivers, tax and related processes, filings, approvals, registrations, certificates and other products and services in accordance with the functions of the MDAs. As much as the Trademarks act made provisions for certain requirements already, a further step of publishing this will bring about certainty and an avenue to review the existing requirements which most definitely will require an update considering how old the Trademarks Act is.
A very important part of the act which addresses some of the defects in the Trademarks Act is section 3(3) (a), providing thus,
“The list of requirements referred to in subsection 1 above shall include all processes, fees, documents and timelines, required for the processing of applications for the products and services and the MDAs are further mandated within 21days from the commencement of the act to conspicuously publish such provisions in section 3(3)(b) on the website of the relevant MDAs and available at the customer’s helpdesk or other offices designated for this purpose.”
With the enforcement of the provisions above, the uncertainties surrounding the registration of Trademarks as it relates to timeline will be cleared as well as curing the defect in section 22(4) of the trademarks act by giving the registry a sense of responsibility to fast track trademark registration in Nigeria thereby helping business owners make informed business decisions on time which will ultimately reflect in the economic activities of the country.
The act also makes a provision for default approval[5], that is where the MDAs fail to communicate the rejection or acceptance of an application within the stipulated timeframe, the applications will be deemed to have been approved. A provision such as this will make the ministries up there game and fast track the registration process, however the downside to this is that certain applications have their peculiar circumstances, cognizance should also be paid to the fact that the search process within the trademark system is still done manually which may cause some applications not properly processed to be considered approved, going by the provision of section 3(3)(b) above. Also, with the backlog of applications awaiting the treatment of the registrar, it may be quite difficult, if not impossible for the registrar to fully process them within the set time frame.[6] A way to avert this will be to reinforce the registry’s online searching system which will in effect allow for a more effective registration processes without necessarily having to result to a manual search.
The Business Facilitation Act, as part of its amendment, also amended section 67 of the Trademark’s Act, which is the interpretation section of the act by including “goods”, inserted in alphabetical order and defined as including “services”. Most importantly, the definition of trademark according to the Trademarks Act was edited and substituted, the Business Facilitation Act provides:[7]
- “trademark means, a mark used in relation to goods or services for the purpose of indicating a connection between the goods and services and a person having the right, either as a proprietor or as a registered user, to use the mark, whether with or without any indication of the identity of that person and may include shape of goods, their packaging and combination of colours and
- in relation to a certification trademark, a mark registered or deemed to have been registered under section 43 of this act.
This definition, compared to the one in the Trademarks Act is all encompassing and more specific in that it includes services, thereby bringing Service Marks into the picture as part of those marks protectable under the Trademarks Act. This further creates the foundation upon which the nice classification of marks can be implemented, especially when it comes to services provided, through the Nice Classifications, the classes of goods and services trademarks can be registered in are listed, with goods occupying classes 1 to 34 and services in classes 35 to 45.
- CONCLUSION/ RECOMMENDATION.
The Business Facilitation Act will, to a very large extent, promote the ease of doing business in Nigeria as it will create swift and effective relationship between business owners and the MDAs in that it brings about a more responsive and reliable mode of operation which will block out the administrative bottlenecks and bureaucracies that lead to unnecessary waste of time that business owners are often faced with, however, it should be noted that for these MDAs to perform optimally, the use of technology needs to infused into their mode of operations, for example, the trademarks registry still utilizes a manual search process, it needs to be upgraded to an online search system, the cumbersome application awaiting treatment may not readily make the impact of BFA, 2023, felt in that sector.
Moreover, some of the Acts that are amended, especially the Trademarks out, are seriously outdated and there is an urgent need to have new legislations drafted which then will be able to incorporate the new trends as well as consolidate the provisions of various extant laws relating to one ministry. The intellectual property law regime in Nigeria is seriously far behind compared to what obtains in the international scenes, the IP Laws in Nigeria, obviously, has no provisions for new IP regimes such as Geographical Indications, Traditional Knowledge, Traditional Cultural Expressions etc.
In conclusion, one major factor militating against our laws in Nigeria is lack of proper implementation, a law, no matter how good it is, if not properly implemented, will never make any change. Once our laws are updated to reflect the global trends and made to reflect the application of technology, as well as devising proper and effective enforcement procedures, it will without doubt promote commerce and the entire economic sector of the country will be good for it.
Temiloluwa Olowoyo can be reached via Email- temiloluwaolowoyo1@gmail.com
LinkedIn- Temiloluwa Olowoyo
REFERENCES.
Business Facilitation Act, 2023.
Trademarks Act, 1965.
New dawn in Nigeria: Evolution of the trademark ecosystem in Africa’s biggest economy. ; www.aluko-oyebode.com.
Business Facilitation law to drive MSMEs Growth- PEBEC: www.dailytrust.com
issues and challenges faced in intellectual property rights in www.ipbulletin.in.
Footnotes
[1] Section 9- 16, Trademarks Act, 1965.
[2] www.aluko-oyebode.com: New dawn in Nigeria: Evolution of the trademark ecosystem in Africa’s biggest economy.
[3] Trademarks act; procedure for and duration of registration.
[4] www.dailytrust.com ; Business Facilitation law to drive MSMEs Growth- PEBEC
[5] Section 4, Business Facilitation Act, 2023.
[6] www.ipbulletin.in ; issues and challenges faced in intellectual property rights in Nigeria.
[7] Section 69, Business Facilitation Act, 2023.